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It’s good to talk – especially about enforcing your IP rights in Scotland

It’s good to talk – especially about enforcing your IP rights in Scotland

Before the Christmas madness got too mad, our contentious IP team held a round table discussion with some English based clients and contacts who regularly seek to enforce their IP rights in the Scottish courts.

We invited representatives from Sky, the FA Premier League, Phonographic Performance Limited (“PPL”), PRS For Music Limited (“PRS”) and the newly created joint venture formed between PPL and PRS to join us at Scotland House in London to share their experiences of litigating in Scotland, what the Scottish Courts do well and where they could perhaps improve upon services offered.

As a Scottish litigator, I was pleased to learn that almost all attendees had a genuinely positive experience of enforcing their IP rights in Scotland. It was generally considered that the IP Court in the Court of Session (“IP Court”) compared very favourably with its English equivalents, the IP Enterprise Court (“IPEC”) and the English High Court. 

Some of the main positives to come out of the discussion in favour of using the IP Court were:

  • The lack of pre-action protocol means that there is no requirement to set out a party’s case in writing in advance of proceedings being raised. This allows a rights holder to get into court quickly without getting bogged down in mandatory correspondence;
  • The IP Court is able to award “without notice” interim interdicts (the Scottish equivalent of preliminary injunctions) meaning that an order to prevent IP infringement can be made at the outset of an action quickly, and without the requirement of giving the other side notice. Unless a letter of caveat is filed by the potential infringer, the first they will find out about the order is when Messengers-At-Arms (the Scottish equivalent to Process Servers) turn up at the infringer’s door and serve it on them personally. I understand that such “ex parte” orders are more difficult to obtain in England. 
  • Under IP Regulations application in Scotland, the IP Court has shown a real willingness to make orders allowing rights holders to advertise any final judgment in certain trade, national and local press. Such publicity notices have the added advantage of being paid for by the infringer. Generally, again my understanding is that these publicity notices are less likely to be awarded in England. 
  • The court costs of raising an infringement action in the IP Court is much cheaper that its English counter-parts. In the IP Court, regardless of the sum sued for, the total court costs of having a court summons “authorised” is currently £307.  In some cases in England, the equivalent cost can be as much as £10,000 per action raised. When rights holders are raising multiple-actions this cost saving can be very significant.

Whilst the above are no doubt real positives that should hopefully promote the IP Court and Scotland generally as rights-holder friendly forum, there was one issue where the Scottish courts did not compare favourably to those in England. 

There have been multiple instances where some rights holders have had to pursue breach of interdict actions where for example, infringers have continued to breach IP rights in contravention of a court order. Such cases are serious and can lead to findings of contempt of court which can ultimately lead to a period of imprisonment.  

Our experience in these cases is that the severity of sanctions for breach of interdicts issued by the Scottish courts is generally much lower than those sanctions issued by the English courts. Comparably speaking the Scottish courts seem inclined to issue low level fines (£500 - £1000) whereas the English counterpart courts seem prepared to issue much higher fines (in some cases £15,000) regularly combined with the additional deterrent of a suspended custodial sentence. 

Overall however, it was clear that that one issue should not detract from the almost overwhelmingly positive feedback for the Scottish court system and procedures. To have the endorsement of significant and prominent rights holders who are regular users of the IP Court is hugely encouraging to any Scottish IP litigator. 

Given the difficulty with raising private criminal prosecutions in Scotland and the ease with which quick and cost-efficient results can be achieved in the IP Court, we hope other rights holders who may have resisted from seeking to enforce their rights in Scotland, consider doing so in the future. 

Please do get in touch if you think the IP Court could be of benefit to you or your clients.    

By Neeraj Thomas

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