The Intellectual Property Enterprise Court – a Court for all the Regions

By Brian Whitehead, Partner

The Intellectual Property Enterprise Court (“IPEC”) was created in its current form in 2013. Intended to provide a lower-cost and more streamlined venue for resolving IP disputes than the High Court, it offers litigants the choice of two “tracks” – the small claims track, for disputes worth less than £10,000, and the multi-track for other disputes. The introduction of the small claims track in the IPEC was one of a number of major steps in making justice more widely available to IP rights owners. Previously, IP owners contemplating bringing disputes for a claim of modest value faced the potential of paying a substantial adverse costs award if their claim was unsuccessful. This was a particular problem for individuals and small companies, such as photographers and self-employed designers, seeking to remedy a misuse of their IP by a large company. The risk of being ordered to pay the large company’s legal costs – likely to run at least into the tens of thousands of pounds – was a strong deterrent to taking action in respect of claims such as copyright infringement in photographs, where the damages would be likely to be only hundreds or a few thousands of pounds.

The small claims track allows such parties to bring a claim, without needing a lawyer, and without facing the abovementioned risk. As the IPEC Guide states “Generally, at the end of the case the losing party will be required to pay little or none of the winning party’s legal costs. There is thus even greater protection from an adverse order on costs in the event that a party is not successful. The procedure in the small claims track is shorter and less formal than in the multi-track, and the court fees are lower”.

Although data for usage of the small claims track is not available, both the current and the previous IPEC judge have stated in public lectures, attended by the author, that the small claims track has been a great success, allowing individuals and companies of limited means to have their claims heard by an experienced IP judge. One limiting factor to date, however, is likely to have been the fact that the IPEC sat only in London. The necessity to travel to London, perhaps requiring an overnight stay for hearings starting in the morning, may have been off-putting to potential claimants who live far away from London.

As of 1 October 2019, however, that has changed. Claims in the small claims track of IPEC can now be issued and heard in Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle, as well as London. District judges in each court have been assigned to hear such cases, and will quickly add to their expertise in hearing such disputes. We expect that there is a substantial latent demand for a low cost regional means of IP dispute resolution, and would not be surprised to see a significant take up of the new scheme by IP owners of limited financial means.

In another recent development, judgment in the first multi-track IPEC case to be heard outside London was handed down earlier this year. Since 2016, the IPEC Guide has made it clear that the judges of the IPEC are able and willing to sit outside London if the parties wish it and inform the court in good time for arrangements to be made. Up until the end of 2018, nobody had apparently taken advantage of that provision, but in the case of APT Training v Birmingham & Solihull Mental Health NHS Trust, two Birmingham-based litigants asked for the trial to be held in Birmingham. HHJ Melissa Clarke, who is an IPEC judge normally based in Oxford, heard the trial. The author hopes that more parties will in future avail themselves of this possibility.