Some advice to fashion and luxury businesses, from a barrister and solicitors practising in England & Wales and France, as well as a lawyer practising in Germany, specialising in intellectual property, on the practical steps to take in order to enforce one’s IPRS in France, Germany and the UK. Jane Lambert, Barrister, 4-5 Gray’s Inn Square

1. Enforcing
Intellectual
Property
Rights
in
England
and
Wales
Jane
Lambert
4-­‐5
Gray’s
Inn
Square
www.4-­‐5.co.uk

2. No
such
thing
as
UK
Law
• Unlike
Germany
the
UK
is
a
unitary
state
so
no
there
is
no
such
thing
as
federal
law
• AdministraEon
of
jusEce
is
devolved
to
ScoHsh
and
Northern
Irish
governments
• There
are
three
legal
systems
in
the
UK
with
very
different
court
systems,
rules
of
procedure
and
even
legal
terminology
(eg.
“claimant”,
“pursuer”
and
plainEff”)

3. Rest
of
Discussion
will
focus
on
England
and
Wales
• Civil
Procedure
Rules
came
into
force
in
April
1999
• Replaced
separate
rules
of
procedure
for
the
Senior
Courts
(then
called
the
Supreme
Court)
and
the
County
Courts
• CPR
consist
of
Rules
and
PracEce
DirecEons
• Part
63
and
PD
Part
63
deal
with
IP
claims
• CPR
are
supplemented
by
Court
guides

4. Courts
of
England
and
Wales
• Senior
courts
include
a
Court
of
Appeal
and
a
court
of
first
instance
known
as
the
High
Court
• High
Court
consists
of
three
divisions:
Chancery,
Queen’s
Bench
and
Family
• Nearly
all
intellectual
property
claims
are
heard
by
the
Chancery
Division
• Within
the
Chancery
Division
there
are
two
specialist
courts
for
IP:
the
Patents
Court
and
Intellectual
Property
Enterprise
Court
(“IPEC”)

5. Chancery
Division
• IPEC
hears
claims
of
less
than
£500,000
that
can
be
tried
in
no
more
than
2
days
• IPEC
has
a
small
claims
track
for
IP
claims
(other
than
patents
and
registered
or
registered
Community
designs)
of
less
than
£10,000
• Patents
Court
hears
patent,
registered
designs,
registered
Community
design
cases

6. Chancery
Division
• All
other
IP
claims
are
heard
by
the
judges
of
the
Chancery
Division
who
also
hear
company,
real
property,
trusts
and
probate
cases
• The
Patents
Court,
IPEC
and
the
rest
of
the
Chancery
Division
apply
different
parts
of
Part
63
and
PD63
to
different
types
of
IP
claim
• There
are
separate
Chancery,
Patent
Court,
IPEC
mulEtrack
and
small
claims
track
guides

7. Chancery
Division
• In
IPEC
recoverable
costs
for
claims
of
under
£500,000
are
limited
to
£50,000
for
determinaEon
of
liability
and
£25,000
for
determinaEon
of
damages
or
accountable
profits
• In
the
IPEC
small
claims
track
recoverable
costs
are
limited
to
just
a
few
hundred
pounds

8. Civil
Procedure
in
England
and
Wales
• Civil
procedure
in
common
law
jurisdicEons
such
as
England
and
Wales
differs
considerably
from
that
of
the
civil
law
jurisdicEons
of
the
ConEnent
• In
common
law
countries
it
is
the
parEes
rather
than
the
judges
who
decide
the
issues
the
court
will
try
and
the
evidence
to
be
adduced

9. Civil
Procedure
in
England
and
Wales
• Cases
are
determined
in
phases:
-­‐
pre-­‐acEon
correspondence
where
parEes
exchange
informaEon
and
try
to
resolve
their
dispute
through
negoEaEon
or
some
other
form
of
ADR
-­‐
issue
of
claim
and
exchange
of
statements
of
case
(formerly
known
as
“pleadings”)
-­‐
disclosure
where
parEes
exchange
lists
of
documents
in
their
possession
or
control

10. Civil
Procedure
in
England
and
Wales
-­‐
exchange
of
witness
statements
and
experts’
reports
-­‐
trial
where
each
party
presents
its
witnesses
and
physical
evidence,
cross-­‐examines
the
witnesses
of
the
other
parEes
and
makes
its
legal
arguments
-­‐
if
the
claimant
wins
there
is
an
inquiry
or
account
where
the
process
is
repeated

11. Civil
Procedure
in
England
and
Wales
• IPEC
streamlines
that
procedure
by
requiring
a
case
management
conference
aeer
exchange
of
statements
where
the
court
fixes
a
date
for
trial,
idenEfies
issues
to
be
tried
and
evidence
to
be
adduced
and
sets
a
Emetable
• The
small
claims
track
determines
liability
and
remedy
in
one
session
and
dispenses
with
most
of
the
other
phases
altogether

12. Civil
Procedure
in
England
and
Wales
• A
trial
usually
takes
place
a
year
aeer
the
issue
of
proceedings
whether
the
case
proceeds
in
IPEC
or
not
• An
account
of
profits
or
an
inquiry
as
to
damages
takes
place
a
year
aeer
trial
• An
appeal
to
Court
of
Appeal
can
be
heard
a
year
aeer
the
trial
or
account
or
inquiry
• Small
claims
cases
are
heard
within
months
of
issue
of
proceedings

13. Civil
Procedure
in
England
and
Wales
• Common
law
procedure
much
more
expensive
than
that
of
civil
law
countries
• A
study
by
IPAC
in
2003
found
that
the
average
cost
of
a
patent
infringement
claim
in
England
was
over
£1
million
in
Patents
Court
and
US$2
to
4
million
in
USA
but
only
about
€50,000
in
France
and
Germany
and
€10,000
to
€40,000
in
Netherlands

14. Civil
Procedure
in
England
and
Wales
• Because
liEgaEon
is
expensive
parEes
are
encouraged
to
sehle
their
dispute
through
negoEaEon
or
ADR
as
early
as
possible
• Unless
there
is
good
reason
to
believe
the
defendant
will
hide
or
destroy
evidence
or
remove
or
dissipate
assets
claimants
are
expected
to
send
a
“leher
before
claim”
before
issuing
proceedings

15. No
such
thing
as
a
“cease
and
desist”
leher
in
English
terminology
• Nearest
we
have
is
a
“leher
before
claim”
• Para
7.1
(1)
PD
–
Pre-­‐AcEon
Conduct
provides:
“7.1
Before
starEng
proceedings
–
(1)
the
claimant
should
set
out
the
details
of
the
maher
in
wriEng
by
sending
a
leher
before
claim
to
the
defendant.
This
leher
before
claim
is
not
the
start
of
proceedings;”
• The
defendant
is
expected
to
respond
in
full
within
28
days

16. No
such
thing
as
a
“cease
and
desist”
leher
in
English
terminology
• The
purpose
of
the
leher
before
claim
is
to
encourage
negoEaEon
and
ADR
in
accordance
with
the
PD
rather
than
by
liEgaEon
• If
a
party
does
not
try
to
resolve
the
dispute
in
accordance
with
the
PD
it
can
be
penalized
by
a
costs
order
or
some
other
sancEon

17. InjuncEons
• Senior
Courts
have
power
to
grant
final
and
interim
injuncEons
under
s.37
Senior
Courts
Act
1981
• Disobedience
to
an
injuncEon
is
punished
by
imprisonment
or
financial
penalty
and
not
simply
an
astreinte
as
in
most
civil
law
jurisdicEons
• Final
injuncEons
are
granted
aeer
trial
but
before
account
or
inquiry
and
interim
injuncEons
awarded
aeer
start
of
proceedings

18. Interim
InjuncEons
• Before
CPR
were
introduced
in
1999
interim
injuncEon
applicaEons
were
commonplace
in
IP
liEgaEon
• Much
rarer
under
CPR
largely
because
they
are
expensive
and
the
losing
party
has
to
pay
the
costs
of
the
applicaEon
within
14
days
of
decision

19. Interim
InjuncEons
• Granted
if
the
court
decides
the
applicant
can
win,
damages
will
not
compensate
applicant
adequately
for
its
loss
if
it
wins
and
that
the
applicant
can
compensate
the
respondent
adequately
in
damages
if
the
court
later
decides
that
the
injuncEon
should
never
have
been
awarded
• Court
has
power
to
grant
special
interim
injuncEons
known
as
“search
orders”
and
“freezing
injuncEons”
which
are
granted
without
noEce
to
the
defendant

20. Interim
InjuncEons
• The
small
claims
track
of
IPEC
has
no
jurisdicEon
to
grant
interim
injuncEons
• IPEC
has
power
to
grant
interim
injuncEons
but
rarely
does
so
• Claimants
who
require
interim
injuncEons
would
bring
their
claims
in
the
Chancery
Division
or
Patents
Court
if
the
claim
is
for
registered
or
registered
Community
design
infringement

21. Search
Orders
• An
order
requiring
an
occupier
to
admit
a
solicitor
who
is
independent
of
the
parEes
and
the
applicant’s
lawyers
and
experts
to
search
the
occupier’s
premises,
vehicles
and
computers
for
documents
and
physical
evidence
and
to
take
copies
or
samples
of
such
evidence
• Only
granted
if
judge
believes
that
the
defendant
may
destroy
or
hide
evidence

22. Freezing
injuncEons
• An
order
prohibiEng
the
respondent
from
transferring
funds
or
spending
moneys
otherwise
than
in
the
normal
course
of
business
• Only
granted
if
judge
believes
that
the
defendant
may
remove
or
dissipate
assets
• Search
orders
can
be
combined
with
freezing
injuncEons

23. What
happens
in
PracEce
• Because
of
costs
most
cases
are
sehled
by
negoEaEon,
mediaEon
or
other
forms
of
ADR
long
before
the
acEon
goes
to
trial
• Piracy,
counterfeiEng
and
since
1
Oct
2014
deliberate
copying
of
registered
or
registered
Community
designs
are
offences
• IPO
and
trading
standards
officers
have
IP
Crime
Unit
• IP
owners
can
bring
private
prosecuEons
in
worst
cases

24. Any
QuesEons?
Jane
Lambert
4-­‐5
Gray’s
Inn
Square
020
7404
5252
jlambert@4-­‐5.co.uk
www.4-­‐5.co.uk