The first things you need to know about enforcing IPR in Scotland
Whilst almost all substantive IP legislation and case law applies in Scotland the same as it does in the rest of the UK, the court procedure for enforcement of those rights is very different.
In this series of briefing notes we will explain some of the peculiarities of enforcing IP in Scotland. Hopefully we can provide you with an overview so that when you need to enforce IP in Scotland, you are aware of the main issues to consider and pitfalls to avoid.
Of course, we are more than happy to elaborate on these points either as part of a presentation which we could run for your team, or you should feel free to just pick up the phone to discuss any queries.
In which court is IP enforced in Scotland?
All significant IP litigation is conducted in the IP Court in the Court of Session in Edinburgh, part of the Supreme Court of Scotland. The Court of Session is a combination of the High Court and Court of Appeal. The IP Court is part of the “Outer House” of the Court of Session and is a court of first instance. The Court of Session also includes our court for civil appeals, the Inner House.
We have a relatively new set of rules for the IP Court intended to achieve a more streamlined dispute resolution process, which we understand is more akin with what English practitioners would expect from the IPEC. Typically within six weeks of serving the court summons (the equivalent of the claim form and particulars of claim, but in one document), parties will be in front of a specialist IP judge. The IP judges are expected to take a “hands on” approach to the early case management of disputes and will expect to see progress being made at each hearing.
In addition to the Court of Session, we have sheriff courts attached to each major town in Scotland, much like the English County Courts. Whilst almost all actions enforcing registered IP will be commenced in the IP Court in the Court of Session, cases for copyright infringement and passing off can be raised in the sheriff court. The level of IP experience will vary greatly across the sheriff court system.
Absence of pre-action Protocols
Through conversations with English IP litigators, we are aware of the somewhat onerous obligations in England to comply with the relevant practice notes concerning pre-action protocols. Whilst we acknowledge there are certainly benefits to having the position fleshed out in pre-action correspondence (particularly if defending an action) there are often occasions when a party wishes to raise proceedings quickly.
In this context, the system in Scotland can be considered rights holder friendly as there are minimal pre-action communications requirements in this jurisdiction. Whilst the IP judges would expect that a party asserting an IP right should first notify an alleged infringer, they are unlikely to face any consequences if they do not do so.
The lack of pre-action requirements also sits well with managing the groundless threats risks present in IP cases and judges will often understand the need to circumvent these risks by raising proceedings at an early stage, without extensive claim letters being sent.
Interim Orders and how to avoid being caught out
As in England, the Scottish IP court is well used to considering applications for injunctive relief. In Scotland, an injunction is called an interdict.
One of the principal differences between Scotland and England is that in Scotland it is often likely that an interim interdict will be granted ex parte. There is also no requirement to provide a cross-undertaking in damages (although if at the end of an action it is proved that the interdict has been wrongly granted, it is likely that damages for wrongful interdict will follow).
To prevent an interim interdict from being granted without warning, it is important that a caveat letter is filed with the court. A caveat is a warning device. It is a legal document lodged in court on behalf of a party (known as the “caveator”) so that certain interim orders, as set out in the caveat, cannot be granted without prior notice being given. The court must be satisfied that all reasonable steps have been taken to afford the caveator an opportunity of being heard before any such order is granted. If a caveat is not in place, the first your clients will hear of the order is when the process servers arrive at their door to enforce it.
A caveat can be lodged on behalf of an individual or company in the Court of Session or any sheriff court in Scotland. Which sheriff courts are chosen will depend on the places where potential actions may be raised. We would always advise brand holders from whom we act to file caveats in the Court of Session at least, and can provide further information on the filing of caveats, if that is of interest.
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