Enforcing IPR in Scotland: The lack of document disclosure

Whilst almost all substantive IP legislation and case law applies in Scotland in the same way as it does in the rest of the UK, the court procedure for enforcement of those rights is very different north of the Border.

We have pulled together a short series of briefings to guide you through some of the peculiarities of enforcing IP in Scotland and provide insights on how to navigate them effectively.

In the third part of our series, we’ll explore an intriguing aspect of the Scottish court system that often surprises English-based IP lawyers, the absence of an equivalent to discovery. In this jurisdiction, there is no blanket obligation on a party to a litigation, to disclose documents to their opponent. Large exercises involving the exchange of documents are almost unheard of north of the Border. There is no doubt that this brings a cost saving. In our previous blog, we discussed the cost and time elements involved in enforcing IPR. It can be frustrating for rights holders who want to access evidence of wrongdoing and/or infringement but it is not easily obtainable in Scotland.

Recovery instead of Discovery

Of course, we have some procedures for recovery of documents.

1. Standard Document Recovery Orders. Litigants before the Scottish IP Court can apply for an order requiring any other person in Scotland (not just party to the action) to produce specified documents (or categories of documents) and/or property during the course of the action. The Court will not authorise a “fishing expedition”. Before a document recovery order is granted, the rights holder must demonstrate that the documents/property are relevant to their claim as presented.

A document recovery order can be sought at any time after defences have been lodged and before the proof (trial). The timing of the request of the order will normally be driven by tactical or commercial considerations.

If the party believed to have the documents (the “haver”) does not produce them voluntarily, they can be compelled to appear at a hearing where they will have to answer questions, under oath, about which documents exist, and where they are. At that stage, all documents within the possession of the haver, that fall within the order, must be produced. There are mechanisms for dealing with documents claimed to be confidential.

2. IP specific information recovery. There are Scottish specific provisions in the Intellectual Property (Enforcement, etc) Regulations 2006 allowing for disclosure of information in IP cases. Regulation 4 provides for applications to obtain information regarding the origin and distribution networks of goods or services which may infringe IPR. A Regulation 4 order enables a rights holder to obtain details of manufacture, volumes, pricing and method of the infringing activity.

3. Search and Seizure orders. The absence of disclosure in Scotland makes applications for a “Dawn Raid” order (the Scots equivalent of a Search and Seizure Order) more likely to be of benefit. It is our experience the IP Court is probably more willing to grant such an order in Scotland, compared to England & Wales. Documents or property secured in this way are taken into the custody of the court and a subsequent application must be made for access to them.

The key tests for grant of a “Dawn Raid” are:

(a)The documents/property must be relevant to civil proceedings likely to be brought; and
(b)The court is satisfied that there is a risk the documents/property may be concealed or destroyed if not secured through a “Dawn Raid”.

A letter of caveat, which warns of an application for interim interdict, does not prevent a “Dawn Raid” order being granted without notice.

As we move onto the final blog in our series we will explore the differences in the application of “without prejudice” privilege between the two jurisdictions. If you require any help navigating IPR enforcement, please get in touch with our intellectual property team who would be delighted to help.

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