Procedure

UK

General infringement proceedings

Types of infringement proceedings:

  • Interim/preliminary injunction proceedings. In urgent cases, a trade mark owner can file an application notice (N16A or N244) for a preliminary injunction (PI) at the relevant court (County Court and High Court, respectively). As urgency is a prerequisite for applying for a PI, it should be filed without delay. There is no hard and fast rule relating to 'fatal' delays, and the requirement will turn on the facts of the case. The applicant must serve notice on the respondent at least three clear days before the interim hearing, unless an ex parte hearing is approved by the court. A decision is reached at the interim hearing, pending full trial.

  • Main proceedings. a case does not have the same urgency, or does not meet the necessary requirements for a preliminary/interim injunction, a party can initiate main proceedings only. A party to a trade mark infringement claim would bring a claim in the Business and Property Courts of the High Court of England and Wales (known as the High Court). Within the High Court, there is also the Shorter Trials Scheme (STS) which can handle cases in a more streamlined manner. STS cases are usually brought to trial within 10 months of issuing proceedings and are more proactively case managed by the court than general High Court claims. Each phase of the litigation in the STS aims to be less onerous than general High Court proceedings, particularly in terms of disclosure, witness evidence and expert evidence. Trade mark cases can also be heard in the Intellectual Property Enterprise Court (IPEC), which is a specialist court within the High Court that hears only intellectual property (IP) disputes. Like the STS, IPEC aims to provide a procedure that is speedier and less costly than cases dealt with by the general High Court. When determining where to bring a claim, thought needs to be given to the number of parties involved, the complexity of the issues, and the value of the claim. Disclosure in general High Court actions is more comprehensive than in STS or IPEC cases, which will be a relevant factor if the other side is likely to have documents damaging to its case. The High Court (including general and STS cases) does not have a cap on the amount of damages or profits that can be recovered. The IPEC, on the other hand, has a damages cap of GBP500,000, which is advantageous if damages are expected to be (relatively) low and an injunction is primarily being sought. Finally, there is a cost cap in the IPEC for recovery of legal costs up to GBP60,000, compared with no cost cap in the High Court (including general and STS cases), which is likely to be a significant factor in deciding on which forum to issue a claim. All forms of remedy are available at the High Court (including for general, STS and IPEC cases), including interim and final injunctions, damages, or an account of profits (which means profits accrued to the infringer by way of their infringement) and/or delivery up or destruction of the infringing items.

Procedure and appeals

Warning letter. Before initiating infringement proceedings in the UK, the claimant is obliged under the Pre-Action Protocol (which is contained in the Civil Procedure Rules – the CPR) to exchange proportionate correspondence and information. The claimant must write to the defendant setting out concise details of the claim, which include the basis on which the claim is made, a summary of the facts and what the claimant is seeking from the defendant. The claimant must allow the defendant a reasonable timeframe in which to respond, namely 14 days in a straightforward case, and no more than three months in a complex case. If a dispute proceeds to litigation, a court will expect the parties to have complied with the Pre-Action Protocol and will take into account any non-compliance when giving case management directions. Further, a court can impose sanctions on a party that has not complied with its pre-action obligations, eg an order as to costs.

First instance. Trade mark disputes are heard either in the High Court (main action or STS) or the IPEC branch of the High Court. In terms of time to trial, a claim in the general High Court will usually take between 12 and 18 months, depending on the Court's caseload. That figure is reduced to 10 months for STS cases and 12 months for IPEC cases. A trial in the general High Court can last for anything from a few days to a few weeks, whereas a trial in the STS can last no more than four days and in IPEC will typically last a maximum of two days. The judge in a High Court claim (including an STS case) may well not be a specialist IP judge, and often time is taken in educating the judge as to the relevant and appliable law and case law. Trials in the IPEC, on the other hand, are only heard by specialist IP judges.

Court of Appeal. All first instance decisions may be appealed to the Court of Appeal. Decisions cannot be appealed merely because the losing party is unhappy with the decision. A party can only seek permission to appeal if it can be shown that the decision at first instance was:

  • wrong, because the court erred in law or fact or in the exercise of its discretion, or
  • was unjust because of a serious procedural or other irregularity.

Further, permission to appeal will only be given if:

  • the court believes the appeal would have a real prospect of success, or
  • there is another compelling reason for the appeal to be heard.

An appeal will be limited and the parties will not have an opportunity to put in new evidence or restate their original claim or defence. Typically, it will take approximately 12 months from being granted permission to appeal to the appeal hearing.

Means of proof and burden of proof

  • In main proceedings, the means of proof are limited to disclosure (discussed further below), witness evidence and in some trade mark cases, expert evidence.

  • Witness evidence. A witness statement is intended to be persuasive on disputed facts in issue. The burden of proof is therefore on the party who relies upon a disputed fact to prove that it is true. It does so by putting in a witness statement from someone within the party's business or who is connected to the claimant/defendant in some other way which allows them to provide first-hand evidence on a disputed fact. A witness who provides a statement will have to attend trial and be available for cross-examination by the other side. It will be for the other side to seek to expose any contradictions, errors or gaps in the statement and/or dispute the credibility of the witness and thus their evidence.

  • Expert witnesses: In some trade mark infringement cases an independent expert is required where the matters in dispute relate to a very specific field, or the issues in dispute are particularly complex and the court is likely to be inexperienced. The duty of an expert, even if instructed by one party to the proceedings, is to the court and not its instructing solicitors. As such, the expert must be an expert in their field, be neutral and independent. Experts are required to disclose the instructions given to them in their expert report, to ensure the parties and the court can clearly understand the basis on which the expert has reached their views.

  • A witness is not permitted to give any opinion evidence whatsoever; however, an expert is allowed to reach conclusions based on their opinion. Instructions to an expert are not protected by legal privilege.

  • Other evidence: Other types of evidence that are increasingly brought into trade mark infringement proceedings are social media evidence (particularly where confusion evidence is found), customer evidence, and consumer behaviour evidence. Survey evidence has historically been introduced, however, in recent years the courts have clamped down on the admissibility of survey evidence and provided strict guidelines for its inclusion in trade mark litigation. In particular, it can be introduced with the permission of the court only.

Discovery/disclosure

In the UK, parties to trade mark infringement proceedings are often subject to onerous disclosure obligations. The CPR require parties to preserve documents at all costs and legal advisors must advise clients of their obligations to preserve (and not delete) documents as soon as litigation is contemplated.

High Court (general)

  • Initial disclosure. Early disclosure is encouraged, and parties are required to front-load their disclosure as far as possible by including it within an initial disclosure list served together with the Particulars of Claim.
  • Extended disclosure. Proceedings are then subject to the extended disclosure procedure, which was introduced in 2019. In advance of the Case Management Conference (CMC), the parties will work together and prepare a Joint Disclosure Review Document. The parties will make proposals for disclosure, including a list of issues for disclosure and whether searches are to be request led, search-based or wide search-based. Parties will usually have to work with an electronic disclosure platform to assist in document extraction and searches of specific servers, hitting on specific keywords within agreed date ranges and in respect of agreed custodians. Extended disclosure can often uncover thousands of documents which will then need to be carefully reviewed by lawyers.

STS Disclosure is more limited in STS cases. It is generally limited to documents on which the party relies as supporting their case and particular documents, classes of documents or documents relating to a particular issue that the party has specifically agreed or been ordered by the court to produce.

IPEC Disclosure in the IPEC is limited to a specific class of documents, or documents that relate to a specific issue that has been determined and agreed at the CMC. The parties do not need to use any electronic disclosure tools.

The duty to disclose relevant and adverse documents continues until proceedings are concluded. Even if the deadline for the parties to exchange disclosure has passed and a party uncovers a new document, it must disclose it to the other side immediately upon discovery.

Time to judgment

  • A preliminary injunction can be granted within a few days to a few weeks. Appeal proceedings (ie against preliminary injunctions) can be expedited.
  • For main proceedings, it's difficult to say with certainty when a judgment can usually be expected as this will depend on the judge's availability. In some cases, judgments are handed down within a few weeks of the trial or appeal hearing, however in other cases, particularly in respect of more complex claims, judgment can be expected within three-six months. Anything longer than that is rare.

Claiming legal costs

As set out above, the recovery of legal costs differs depending on whether the claimant issues a claim in the High Court or in the IPEC.

IPEC

  • Cost cap. Cost recovery in the IPEC is capped at GBP60,000, which means the winning party can only seek up to GBP60,000 of their legal costs even if costs incurred were far higher. Whilst this has a real downside, the risk of losing is also limited to GBP60,000, which provides significant comfort to some. The cost recovery for the winning party is also limited within each phase of the litigation - eg GBP9,000 in respect of the Particulars of Claim and GBP8,000 in respect of the Defence and Counterclaim.

  • Part 36. Part 36 offers are made in accordance with provisions within the Civil Procedure Rules and can be deployed at any time in the proceedings. Part 36 is intended to encourage parties to settle disputes without going to trial on the basis that they have specific cost consequences depending on whether an offer is accepted or declined. In the IPEC, where a claimant has made a Part 36 settlement offer, and then obtains a result that is at least equal to that offer, technically the cost cap regime in the IPEC falls away. Having said that, in practice the court will usually apply a percentage uplift to the overall costs cap and so a winning claimant could recover more, however this uplift is unlikely to be more than 25% of the costs cap.

High Court (general)

  • Cost budgeting. Recovery of legal costs in the High Court is not subject to a cap, but is limited by cost budgeting. For claims with a value of less than GBP10 million (which is likely in a trade mark dispute), the parties need to prepare, file and exchange cost budgets. Ahead of the CMC, the parties will seek to agree the cost budgets and, where not agreed, the court will make an order as to the budgeted costs. If there are any significant developments or changes that the parties had not anticipated, a party can make an application to amend their cost budget. To obtain an increase in the agreed cost budgets, the party seeking to amend their budget will need to provide good reasons as to why it has or is likely to depart significantly from what was agreed.

  • Detailed assessment: At the end of a High Court trial, the court will usually make an order that the winning party can recover its costs from the unsuccessful party, which will be determined at a detailed cost assessment hearing.

  • In a High Court trial, the court is likely to award an interim payment to the winning party immediately after the judgment is handed down in the form of a percentage of the winning party's budgeted costs. The parties are then to initiate detailed assessment proceedings which are decided at a hearing by a costs officer. Usually, the parties will seek to settle the costs and will avoid detailed assessment proceedings given that they can be lengthy and costly. If a party has been granted permission to appeal, and the costs have not been settled, the parties will usually stay any detailed assessment proceedings until the conclusion of the appeal.

  • Cost assessment: Whilst the court will usually only award costs on a standard basis which have been reasonably and proportionately incurred, and in line with the cost budget, costs can also be awarded on an indemnity basis. Costs can be awarded in excess of the agreed costs budget if the unsuccessful party has conducted itself badly or unreasonably. The pursuit of a weak claim will not usually on its own justify an order for indemnity costs, provided the case was at least arguable. Pursuit of a hopeless claim, on the other hand, may well lead to such an order. The threshold for a costs award on an indemnity basis is high and each case will turn on its own facts.

  • Part 36: Part 36 offers are also available in the High Court but cannot be shown to the court until the determination of costs following judgment on liability. Making a Part 36 offer is a very important tactical step in proceedings and applies pressure on the other side to settle a case and protect the client's position on costs. If a Part 36 offer is not accepted, it could have significant risk as to costs and interest. Careful consideration will therefore need to be given on the offer and whether the receiving party believes it will be able to beat the offer at trial.

STS

  • Cost budgeting does not apply in STS cases unless the parties agree otherwise. There is no detailed assessment for STS cases where the costs are summarily assessed immediately after the trial has been heard following the exchange of costs schedules.

Continue reading

View all countries
Preliminary injunctions