The High Court has refused to set aside its earlier order to transfer a case to the Intellectual Property Enterprise Court (IPEC).
Originally established in 1990 as the Patents County Court, the IPEC has since 2013 been a specialist list within the High Court. The IPEC and its rules are geared towards swifter and cheaper resolution of less complex and lower value IP claims. Recovery of legal costs is generally limited to £50,000 and damages pay-outs limited to £500,000.
The claimant in the present case is Massimo Osti SRL, owners of a textile archive which is the legacy of influential garment engineer and fashion designer Massimo Osti. The defendants, Global Design and Innovation and its sole shareholder and director, design make and sell clothing including, for a time, MASSIMO branded clothing under licence from the claimant.
The proceedings had been commenced in the High Court but the court had ordered it be transferred to the IPEC. The claimants applied to have the transfer set aside but, per this latest ruling, the High Court insists that this is an IPEC matter.
The facts of the case relate in the main to trade mark infringement resulting from the defendant trading in the claimant's branded goods after the expiry of the licence. So there is a breach of licence issue too, apparently complicated by the fact that the originally licensed entity was wound up during the licence term, resulting in argument as to the existence and terms of an implied licence to the defendants.
The below quote from the judgment summarises some of the key considerations for determining whether an IP case is a matter for the High Court or the IPEC.
Suffice to say that the judge in this case remained unconvinced that the claim was either as complex or worth as much as the claimant made out, meaning that it was well within the remit of the IPEC.
The following issues arose in the application to set aside the transfer order: (1) The defendants' finances and their ability to afford to defend the claim in the High Court; (2) the value of the claim (i) the value of the monetary relief sought; (ii) the value of the injunctive relief sought; (iii) the value of the Marks, which the defendants seek to revoke/be declared invalid; (3) the complexity of the issues; (4) the estimated length of the trial. ... Having considered all the factors set out above, in my judgment, they point clearly to the conclusion that this is a claim which is suitable for the IPEC and ought not to be retained in the High Court.