World Intellectual
Property - IP Laws - UK
Alternative disputes litigations
There are three main forums available to litigants that wish to start proceedings in respect of trademarks: the Trademarks Registry, the Patents County Court (PCC) and the High Court. A review of the UK IP framework was arranged by the UK government concerning the high cost of IP enforcement and litigation. Whereas all of these tribunals can determine actions relating to validity of trademarks, only the High Court and the county courts have jurisdiction to determine registered trademark infringement disputes.The Trademarks Registry:- It has a number of different functions outside of the ambit of assessing trademark infringement. The most obvious one is to oversee the prosecution process written or oral whereby an applicant seeks registration of trademark and amendments to trademark applications.The High Court:- All proceedings involving the alleged infringement of registered trademarks are brought by way of issuing and serving a claim form in a specialized IP list within the Chancery Division of the High Court. The High Court has its own dedicated specialized judges to decide the dispute. Judicial case management of civil litigation was one of Lord Woolf's main objectives in his 1998 review focusing on where in it was stated that the courts must deal with each case proportionately bearing in mind factors such as the importance and complexities of the issues and the monetary value of the claim. As a rough guide, the smallest and simplest cases are assigned to the small claims track and those with a high monetary value are allocated to the fast track, with standard directions and a tight timetable in order to complete all pre-trial activity. Most trademark infringement cases will be sufficiently complicated and high in value to be allocated to the multi-track. The claimant must serve its particulars of claim within 14 days of service of its service. The defendant then has 14 days or 28 days if an acknowledgement of service has been filed within 14 days of the particular claim. It is common in trademark litigation for claimants to seek an interim injunction from the court, particularly as the relief sought in such cases is often tyo stop someone using a particular name rather than being monetary in nature.The Patents County Courts:-The PCC was established with extensive consultation with industry and legal professionals to hear IP-related disputes at the county court level, and it was intended to be a forum where simpler cases could be dealt with under a cheaper and more streamlined procedure than in the High Court. The multi-track will be the most appropriate track for the majority of PCC cases.There is another forum which is probably best known and most well-used form for use in IP disputes i.e. Mediation i.e. Mediation or Alternative Dispute Resolution recognized by Woolf's reforms 1998. Under the Civil Procedure Rules (CPR), parties are encouraged to use ADR procedure if the court considers this appropriate and to facilitate use of such procedure. It is clear that the courts take the view that litigation should be a last resort, and that the parties should consider whether some form of ADR procedure would be more suitable than litigation.
Conclusion:- Despite the extensive promotion of ADR both from law reform and from the courts, the statistics show that it is still not viewed as a realistic alternative to trade mark litigation. IP owners may prefer to incur the extra expense of pursuing the case to trial to obtain a judgment which can act as a deterrent to other competitors from infringing their rights and thus save them litigation costs in the long run. ADR could be used should the draft EU Directive on Certain Aspects of Mediation in Civil and Commercial Matters be implemented. However, review has recommended a number of changes to IP litigation aimed primarly at saving costs and this will no doubt keep litigation as the primary forum in which to conduct trademark disputes. The courts have made it clear that the ADR must not be ignored and parties are well advised to consider both alternatives before deciding on their eventual dispute strategy.
For any
queries relating to our services and costs, please feel free to
contact us at info@iprfirm.com.
IPR
FIRM.COM - Online IPR Law Firm, India – Trade Marks, Copyright Registration,
Delhi, India
| | |
(c) IPR Firm, 2007.
|
