Trade Mark and Design Disputes Decided in the Small Claims Court

Death of Her Majesty Queen Elizabeth II

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Death of Her Majesty Queen Elizabeth II

The staff at Franks & Co were saddened to learn of the death of Her Majesty Queen Elizabeth II. Our thoughts are with His Majesty King Charles III and the rest of the Royal Family.

The United Kingdom is now officially in a period of mourning until after the Queen’s state funeral which is to be held on Monday 19 September. Normal day-to-day business will continue throughout this period.

The UK government has declared the day of the funeral to be a national Bank Holiday, so the United Kingdom Intellectual Property Office will be closed on Monday 19 September.

The United Kingdom Intellectual Property Office’s official guidance on bank holidays is given below:

The office is deemed to be closed on weekends, Good Friday, Christmas Day and all England and Wales bank holidays for all types of business, except for the filing of new applications not claiming priority. If documents are filed for these types of business at times when the office is deemed to be closed, they will receive an official filing date of the next working day.

Any official time period which expires on a weekend or any other day on which the office is closed is extended to the next working day.

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A new small claims track has been introduced to the Patents County Court, to make it cheaper and easier for small and medium sized businesses to protect their intellectual property rights.

Up until now, if a business has a patent, trade mark, unregistered design or copyright dispute, which cannot be settled by out of court procedures such as alternative dispute resolution, arbitration or negotiation, then this has meant taking the case through the High Court, the County Court, or the Patents County Court. Legal costs are high, with disputes in the High Court routinely racking up legal bills of £300,000 or more per side, and the loser ends up paying both their own costs and the other side’s costs. In the Patents County Court, legal bills can still come in above £100,000 per side, but the other side’s legal costs are capped at £50,000 for a first instance decision.  

However, as from October 2012, it is now possible to allocate copyright, UK and European trade mark and unregistered design right disputes to the new “small claims track” in the Patents County Court.

Patent Attorney Litigator Dr Robert Franks of Franks & Co comments “The small claims track is suitable for claims where the damages are likely to be £5,000 or less, and the claimant seeks an injunction to prevent further infringement. The legal costs of the procedure are more in proportion to the amount of damages to be recovered ”.  

Although it has always been possible, few persons represent themselves, due to the complexity of the procedure. In the small claims track however, it will be easier for individual business owners to represent themselves, by making written submissions to the court, using the forms available from the Civil Procedure Rules website 

For those who prefer professional representation, there are specialist Patent Attorney Litigators and Trade Mark Attorney Litigators, who are members of the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA). 

Article Published October 17, 2012