Litigation and the perils of big boy litigation.
An SME was accused of wanting to have its own cake and eat it when it lost an application by 20th Century Fox to transfer proceedings for trade mark infringement and passing off from the Patents County Court (PCC) to the High Court. The Claim was for trade mark and passing off which arose from use of the sign GLEE. The Defendant is 20th Century Fox and owns the rights to the hugely popular TV and stage show ‘Glee’.
The Claimant’s business is comedy. It runs a number of venues in England. It owned a registered trade mark No. 2200698 registered as of 19th June 1999 for the mark “the glee CLUB” in the form of a logo or device in classes 25 (clothing) and 41 (for entertainment services, production and presentation of television programmes and other services).
The Defendant owned a number of trade marks and unsurprisingly use from both sides of the word “Glee” causes each other problems. The Claimant issued a claim without any exchange of correspondence and sought to keep the costs within the PCC’s scale of costs. The Defefendant objected to this and wanted the claim transferred to the High Court.
The PCC’s Judge Birss listening to a number of submissions, set out a useful guide as to how a court ought to treat such an application:-
“The principles applicable to the Patents County Court as presently constituted were addressed by me in my judgment in Alk-Abello v Meridian Medical Technologies  EWPCC 14 and also in A.S. Watson v The Boots Company  EWPCC 26. They were also considered by Kitchin J (as he then was) in the High Court in Caljan Rite-Hite v Solvex  EWHC 669 (Ch).
After dealing with the detailed legislation and various older cases I summarised the factors to be considered in paragraph 30 – 32 of Alk-Abello as follows:
30. Pulling the various factors together, the points to consider are:-
i) the financial position of the parties (s289(2) 1988 Act). This includes but is not limited to considering whether a party can only afford to bring or defend the claim in a Patents County Court (para 9.1(1) Practice Direction 30). This factor is closely related to access to justice. The Patents County Court was set up to assist small and medium sized enterprises in enforcing and litigating intellectual property disputes. Guidance on the nature of these enterprises can be found from the Commission Recommendation 2003/361/EC.
ii) whether the claim is appropriate to be determined by a Patents County Court.
This involves considering:
a) the value of the claim, including the value of an injunction and the amount in dispute. (para 9.1(2)(a) Practice Direction 30 and CPR 30.3(a))
b) the complexity of the issues (para 9.1(2)(b) Practice Direction 30 and CPR 30.3(d))
c) the estimated length of the trial. (para 9.1(2)(c) Practice Direction 30). Related to this is CPR 30.3(b) – whether it would be more convenient or fair for hearings (including the trial) to be held in some other court.
iii) the importance of the outcome of the claim to the public in general (CPR 30.3(e)) albeit that a case raising an important question of fact or law need not necessarily be transferred to the Patents Court (s289(2) 1988 Act).
A factor which does not play a role is the one in CPR Pt 30.3(c) (availability of a judge specialising in the type of claim in question) since specialist judges are available in both courts.
Once those factors are considered I must bear in mind what sort of cases the Patents County Court was established to handle and that its role is to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights. The decision turns on what the interests of justice require, taking into account both parties interests and interests of other litigants.”
The Judge then looked at the conduct of both parties and while he had expressed sympathy with the Claimant allowed the application.
“There is no easy answer to this application. Important factors in favour of the High Court are the value of the claim and the fact that the case cannot be tried in two days under the PCC system. A strong factor in favour of the PCC is the size and financial strength of the claimant but this is not a case in which the claimant would be simply unable to cope with High Court costs. It may be an appropriate case for a High Court costs capping order but that remains to be seen. Were it not for the fact that it seems to me the defendant has a tendency in this case to use its commercial strength as a weapon I would have fewer qualms about transferring the case to the High Court. I believe the decisive factor in this case is the claimant’s approach to the litigation despite its being an SME. The claimant is not approaching the case as if it is a Patents County Court claim. The claimant’s approach has been to run this case as a full scale High Court style action with a claim for an injunction with catastrophic consequences for the defendant. Since that is the claim the claimant wishes to advance, the correct forum in which to do it is the High Court.”.
The above paragraph is important as it highlights the importance of conducting the litigation in a correct and proportionate manner.
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