Insights on cost-effective IP enforcement in the UK taken from joint CMS/IPLA Webinar

On 30 November 2023, CMS and IPLA hosted a panel discussion on how rights owners can enforce their IP rights in an effective manner in the UK and how the UK IP profession can continue to make the UK an attractive venue for clients to pursue IP claims. This followed on from CMS’s IPEC Review 2013-2021.

Sarah Wright, CMS’s Head of IP, chaired a discussion with His Honour Judge Hacon, Presiding Judge of the Intellectual Property Enterprise Court (IPEC), Guy Hollingworth, Barrister at One Essex Court, Usman Tariq, Advocate at Ampersand Advocates, and Oscar Webb, Senior Associate at CMS. Here are some of the main points that emerged from the lively and informative discussion.

Key takeaways from the webinar

IPEC decision times have improved but there is room for further efficiency

The IPEC has become faster in delivering judgments, with an average of 18 months from issue to decision in 2023, compared to 20 months in 2022 and a high of around 2 years during the pandemic. However, this is still slower than the Shorter Trial Scheme (STS), which has an average of 341 days (excluding outliers). The IPEC is also quicker than the High Court, which has averages around 24 to 36 months. The IPEC is notably popular for trade mark and passing off claims, while the High Court attracts more patent and breach of confidence cases.

Judge Hacon noted IPEC claims rose in 2023, with 121 claims issued as of 30 November 2023, demonstrating a solid recovery post-pandemic.

Statistics on the STS were difficult to find, but indicated that it is underused, despite its advantages in terms of speed and costs. Judge Hacon noted that this reflected what he was hearing from other judges.

The panellists agreed that the STS approach of limiting the trial length, and making pleadings fit with that, was more effective for speeding up proceedings than starting with pleadings. However, Judge Hacon noted that the court has limited influence on the speed of proceedings. It can only influence the time from the application for a case management conference (CMC) to the CMC itself, and from the CMC to the trial. In his experience, a significant cause of delay was often the time it took for parties to apply for a CMC. Parties are also generally resistant to having a trial date less than six months after the CMC. He encouraged the parties to be more proactive and cooperative in setting the timetable for the proceedings.

Good and bad behaviours for achieving cost-effective dispute resolution

The speakers also discussed some of the dos and don'ts of IP litigation, based on their experience and observations. Some of the good behaviours that can help reduce costs and complexity include:

• Coming prepared to the CMC, with a clear view of the issues and the disclosure required
• Using concise and focused inter partes correspondence, avoiding unnecessary arguments and allegations
• Applying the cost-benefit rule in the IPEC, which allows the court to limit the issues or evidence if the likely costs are disproportionate to the value of the claim
• Exploring alternative dispute resolution (ADR) options, such as mediation, which can offer more flexibility and creativity than a court order. Guy Hollingworth noted that mediation has a very high success rate even when it is court ordered (which the English courts may be more willing to do following the very recent case of Churchill v Merthyr Tydfil CBC).

Some of the bad behaviours that can increase costs and hostility include:

• Seeking extensive disclosure that is unlikely to make a difference to the outcome of the case
• Making allegations of deliberate wrongdoing that are not essential to the claim. This raises the temperature and often increases the scope of disclosure increasing costs.

Scotland offers some advantages for IP enforcement

Usman Tariq highlighted some of the features of the Scottish legal system that can benefit IP rights owners, especially in terms of interim remedies and disclosure. He noted that:

• There is no mandatory pre-action correspondence in Scotland, which means that an interim interdict (injunction) can be obtained within hours of instruction, without notice to the defender
• There is no need for affidavits or cross-undertakings in damages when seeking an interim interdict, which reduces the evidential burden and the financial risk for the pursuer
• There is no wide-ranging disclosure in Scotland, but the court can order specific disclosure based on the pleadings, to make them more focused and precise
• The court can also grant search and seizure orders (known as commission and diligence) to preserve and recover evidence of infringement
• The costs of litigating in Scotland are generally lower than in England and Wales, and the court fees are fixed and modest

Conclusion

The webinar provided a valuable insight into the current state and future prospects of IP dispute resolution in the UK, from the perspectives of the judiciary, the bar, and the solicitors. The speakers agreed that the UK offers a range of options and advantages for IP rights owners, and that there is scope for further improvement and innovation. They also emphasised the importance of choosing the right forum, the right strategy, and the right behaviour for each case, and of considering ADR as a complement or alternative to litigation. For more information, please contact one of the following local CMS experts or your usual contact at CMS.

Article co-authored by Tycho Orton, Trainee Solicitor at CMS