BG Electrical v ML Accessories
| Jurisdiction | England & Wales |
| Judge | Judge Hacon |
| Judgment Date | 29 June 2016 |
| Neutral Citation | [2016] EWHC 2296 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2015000067 |
| Date | 29 June 2016 |
[2016] EWHC 2296 (Pat)
IN THE HIGH COURT OF JUSTICE
PATENTS COURT
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
His Honour Judge Hacon
Case No: HP-2015000067
Ms K Pickard (instructed by Marks & Clerk LLP) appeared on behalf of the Claimant
Mr G Pritchard (instructed by Olswang LLP) appeared on behalf of the Defendant
(Draft for Approval)
No of Words: 1,743
No of Folios: 24
This is an application by the defendant to transfer the proceedings to IPEC. The claimant wishes the action to remain in the Patents Court to be dealt with under the Shorter Trials Scheme. In brief, the claim is for the infringement of four UK registered designs and 23 UK unregistered designs. These all relate to a range of what are called "screwless wiring accessories", such as plug sockets and light switches.
The starting point in relation to whether this should be transferred to IPEC is practice direction 30 paragraph 9.1:
"When deciding whether to order a transfer of proceedings to or from the Intellectual Property Enterprise Court the court will consider whether –
(1) a party can only afford to bring or defend the claim in the Intellectual Property Enterprise Court; and
(2) the claim is appropriate to be determined by the Intellectual Property Enterprise Court having regard in particular to –
(a) the value of the claim (including the value of an injunction);
(b) the complexity of the issues; and
(c) the estimated length of the trial."
This paragraph from the practice direction has been considered in the past by Judge Birss sitting in the Patents County Court (as he and it then were) in cases such as Comic Enterprise Ltd v Twentieth Century Fox Film Corp [2012] EWPCC 1 In that case the judge also reviewed some of his earlier decisions such as Alk-Abello Ltd v Meridian Medical Technologies Dey Pharma Lp [2010] EWPCC 14. Among the factors particularly to be taken into account are firstly that the Patents County Court and now IPEC have a specific role in improving access to justice for SMEs in IP cases. Judge Birss said that this was in many instances the decisive factor in determining whether an action should be heard in IPEC or in the general Chancery Division. The test in this regard is not whether an SME would be entirely incapable of conducting litigation in the general Chancery Division in the sense that it would go bust if that happened; the test is whether an SME would be significantly affected by the difference in regime in the general Chancery Division such that its ability to access justice would be significantly compromised.
This case is outside the usual run in the sense that I am now comparing the circumstances which would apply in IPEC with those which would apply in the Patents Court applying the Shorter Trials Scheme. The three main factors identified by both Mr Pritchard, who appeared for the defendant, and Ms Pickard, who appeared for the claimant, were these: the first factor to be considered is the complexity of the case. Secondly, what Mr Pritchard called access to justice and this really was down to the effect of the costs cap in IPEC. The third point to be considered is the cap on damages which applies in IPEC. Perhaps to these I should add a fourth, although related to the third: the value of the injunction which may be granted. I take those in turn.
So far as complication is concerned, I looked at the pleadings. It seems to me that this is not of itself a particularly complex case. It is something that would typically be heard in IPEC. The real issue here is how long it would take to be heard. It seems to me this is not really a...
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