Patents County Court update: small claims track effective October 2012

The Patents County Court (PCC) has introduced a small claims track, for claims under £5,000, which can be used for litigating trade mark, passing off, copyright, database right and unregistered design right matters.

Since 2010, the PCC has successfully provided an effective and streamlined forum to deal with relatively straightforward intellectual property claims. These procedures allow for active case management by the court, and costs and damages caps of £50,000 and £500,000 respectively apply, which makes the PCC more accessible to SMEs. 

Further reforms came into effect on 1 October 2012, which now allow a small claims track to be used before the PCC. The small claims track will be available for trade mark, passing off, copyright, database right and unregistered design right matters, but will not be available for claims relating to patents or registered designs.  

Despite the caps referred to above, commencing action before the PCC was still seen by some companies as prohibitively expensive and time consuming.  It is therefore hoped that the introduction of the small claims track should provide for quicker and simpler resolutions, which will ultimately make the court yet more accessible. A “small claim” has been defined as anything less than £5,000. 

A case will not automatically be run on the small claims track but must be selected by either the claimant or the defendant, with the claimant having to specify this on the Particular of Claim.  The defendant has an opportunity to object to the small claims track being used, but the court will ultimately decide on the track it believes is the most appropriate taking into account the value of the claim and the complexity of the issues.

The small claims track has its own scale of costs. For example, each party will pay its own legal costs but court fees, loss of earnings for a party and/or a witness of up to £90 per day can be recovered by the winning party, as can travel expenses. Legal fees of up to £260 and expert fees of up to £200 per expert may be applicable.

It is hoped that the small claims track will encourage intellectual property owners to enforce their rights given the reduced financial and time commitment needed to bring an action under this regime.