Bringing or Defending a Small IP Claim in Leeds

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Jane Lambert

Nearly 10 years ago I wrote How to Bring or Defend a Small Intellectual Property Claim in the Intellectual Property Enterprise Court in NIPC London. I wrote it with litigants in person in mind though I thought it would also be useful to lawyers who do not specialize in intellectual property and patent and trade mark attorneys who do not litigate regularly in the civil courts. It was intended to supplement A Guide to Bringing and Defending a Small Claim by the Civil Justice Council and A Guide to the Patents County Court Small Claims Track which has been replaced by the Guide to the Intellectual Property Enterprise Court Small Claims Track ("the Guide").

Much of that article remains true though there have been a number of developments since then.  The UK has left the European Union which means that IPEC is no longer a Community designs or EU trade mark court. Disputes over unregistered Community designs or EU trade marks that have arisen since 31 Dec 2020 are no longer within the IPEC Small Claims Track's jurisdiction.  The Leeds District Registry and the District Registries of several other major cities have been integrated with the courts in the Rolls Building in London to establish the Business and Property Courts (see my article Launch of a Judicial Super Highway? 12 July 2017 IP Northwest).  As a consequence of that integration it has been possible to bring certain types of small intellectual property claims in Leeds for most of the last 5 years (see Jane Lambert Small Claims Track IP Litigation in Leeds 10 July 2019).  According to Annex A of the Guide small IP claims in Leeds come before District Judge Prest KC.  Since 3 July 2023 most small IP claims litigation has been conducted in the North because Manchester Civil Justice Centre is now the new home of the IPEC Small Claims Track (see Jane Lambert IPEC Small Claims to be managed in Manchester 9 June 2023 IP Northwest).

The sections of How to Bring or Defend a Small Intellectual Property Claim in the Intellectual Property Enterprise Court that continue to apply are those headed "Do you need a Lawyer?" and "Have you got a Case?"  In addition to the pro bono services listed in section 6 of the Guide, I would add IP Pro Bono which is now part of Lawworks, Advocate which was formerly known as "Bar Pro Bono" and my own "Initial Advice and Signposting" clinic which I run in conjunction with Barnsley Business Village.  

It is still necessary for claimants to write a "letter before claim" unless there are very good reasons not to do so but the practice direction referred to in the section headed "Pre-Action Correspondence" has been revoked and replaced with the Practice Direction - Pre-Action Conduct and Protocols (see my article What to do about the new Practice Direction - Pre-Action Conduct 6 May 2015 NIPC Law).  Guidance on the steps to be taken by parties to intellectual property disputes is no to be found in para 6 of the Practice Direction.

The first paragraph of the section headed "Starting the Claim" has to be modified since the Manchester Civil Justice Centre and not the Rolls Building is now the home of the IPEC Small Claims Track and a small IP claim can now be issued out of the Business and Property Courts in Birmingham, Bristol, Cardiff, Liverpool, Manchester and Newcastle as well as Leeds.   If you want a case study of an IP case in one of those other cities, see Small Claims Track IP Litigation in Bristol 24 Feb 2022 NIPC Severn-Hafren.

I would repeat everything else I said in my previous article.  Anyone who wishes to discuss this topic should call me during normal business hours on 020 7404 5252 or send me a message through my contact form.

Is the Northern Powerhouse a Casualty of Brexit?

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Jane Lambert

The announcements in the Department for Transport's Integrated Rail Plan for the North and Midlands of the cancellation of HS3 and the spur of the HS2 to Leeds and Sheffield were as predictable as they were regrettable. It would appear from Helen Pidd's article Government planning ‘to put HS2 on stilts through Manchester’ in The Guardian on 19 Nov 2021 that even the western spur is to be constructed on the cheap. The reason for the announcements is that the current government regards the Northern Powerhouse project as an exercise in regional development, not unlike similar projects of the last 100 years, rather than the construction of a conurbation of 6 million people to serve as a vibrant industrial, commercial and cultural counterweight to London.

As I said in Northern Powerhouse in 2017:

"The Northern Powerhouse was conceived in the days of the Coalition by the former Deputy Prime Minister, Nick Clegg, and the former Chancellor, George Osborne, as a strategy to stimulate economic growth in the North of England by developing the principal cities of the North of England into a counterweight to London through improving transport links and investing heavily in science, technology, the arts and education (see the speech by the Rt Hon George Osborne “We need a Northern powerhouse” 23 June 2014)."

I added:

"Sadly, the present Chancellor, Philip Hammond, lacked his predecessor’s vision. His Northern Powerhouse Strategy has diluted and downgraded the idea of an integrated Liverpool to Leeds conurbation as a viable counterweight to London to a general regional development programme like many others before it for the area north of the Humber and Mersey to the Scottish border."

Hammond has been replaced by Sunak but his vision appears to be just as limited. 

In more than one sense, the Northern Powerhouse is a casualty of Brexit.   Osborne literally as he was removed from his post by May. Clegg lost his seat the year before the referendum but it was pressure for a referendum that swept the Tories back to power with a sufficient majority to govern alone.  However, maybe the idea of a mega-city in the North of England makes less sense when the domestic market suddenly shrinks from 510 million to 67 million.

Before Brexit maps of Britain showed the spurs of HS2 extending from Manchester to Glasgow in the west and from Leeds to Newcastle and Edinburgh in the east but what is the point if Scotland secedes?  The thought that the future boundaries of the state will run from Berwick to Carlisle may well have coloured the decision to abandon a tunnel to Piccadilly and run the new trains into the centre of Manchester on stilts,

Anyone wishing to discuss this article can call me on 020 7404 5252 during office hours or send me a message through my contact form.

What happens to European Union IP Rights after Brexit?

IP After Brexit from Jane Lambert

Although one of the long term objectives of Brexit is to reposition our trade with the wider world, British businesses of all sizes including many in Yorkshire and the Humber retain important operations in the 27 remaining member states and vice versa. Arts 54 to 61 of the agreement by which the UK withdrew from the European Union ("the withdrawal agreement") provide for the continued legal protection of those operations. On 19 Feb 2021, I was invited to discuss those provisions and their implementation to the Barnsley Business Village.

Many businesses applied for EU trade marks or registered Community designs rather than UK ones because they offered protection in 28 member states and not just one.  Those rights ceased to apply to the UK at 23:00 on 31 Dec 2020 when the transition or implementation period provided by art 126 of the withdrawal agreement expired but they remain in force in the 27 member states.  However, owners of EU trade marks should be aware that their registrations may be revoked under art 58 (1) (a) of the EU trade mark regulation "if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use."  

Art 54 (1) of the withdrawal agreement entitles the owner of an EU trade mark, registered Community design or Community plant variety to a comparable British trade mark, registered design or plant breeder's right without a fee or any fuss unless he or she opts out of that right. The Trade Marks Act  1994, Registered Designs Act 1949 and the Plant Varieties Act 1997 have been amended to provide for such rights.   Applicants for EU trade marks and registered Community designs which were not determined before 31 Dec 2020 have an additional period of 9 months to apply for a UK trade mark or registered design offering the same protection.

One very important change that occurred on 31 Dec 2020 is that courts in the United Kingdom are no longer EU trade mark or Community design courts.  Actions for infringement of EU trade marks, Community designs or Community plant varieties have to be brought in an EU member state such as the Republic of Ireland,  As one of my colleagues in chambers is a senior counsel of the Irish bar (the equivalent of a QC) who qualified as a trade mark attorney before reading for the Irish and English bars, my chambers can continue to represent British holders of EU trade marks and Community designs in the EU.    

i discussed these and other matters in my presentation to the Barnsley Business Village on 19 Feb 2021,  Earlier on Friday, I had been invited by Helen Wong to update my contribution to her book, Doing Business After Brexit A Practical Guide to the Legal Changes, which she first published in 2017.   Articles and presentations that I have already written on the subject are as follows:

• How Brexit has changed IP Law NIPC Brexit 17 Jan 2021 
• How Brexit has changed IP Law Presentation (70 slides) 27 Jan 2021 
• How Brexit has changed IP Law: IP after Brexit Handout 27 Jan 2021 
• SUDs (Supplementary Unregistered Designs) NIPC Law 13 Feb 2021 
• Geographical Indications in the UK after 31 Dec 2020 NIPC Law 30 Sep 2020 
• The Draft EU-UK Trade and Cooperation Agreement: What We Know So Far NIPC Brexit 26 Dec 2020 and
• The IP Provisions of the EU-UK Trade and Cooperation Agreement NIPC Law 30 Dec 2020.

Anyone wishing to discuss this article or the topic generally may call me on 020 7494 5252 during normal business hours or send me a message through my contact form. 

Sheffield Business and IP Centre: IP Rights and Brexit

IP Rights and Brexit from Jane Lambert

One of four things has to happen between now and the 29 of this month:

• The withdrawal agreement that art 50 (2) of the Treaty on European European Union required the EU and UK to negotiate and conclude may be approved by Parliament in which case we shall leave the EU on the 29 but EU law will remain in force until 31 Dec 2020 at the earliest;
• The Prime Ministers notice of intention to leave the EU may be revoked in which case everything will remain the same forever;
• The UK and remaining EU member states may agree to extend the 2-year notice period in accordance with art 50 (3) in which case everything will remain the same as it is now until the end of that further period; or
• Nothing may be done between now and the 29 of this month in which case the UK will leave the EU at 23:00 on the 29 and EU law will cease to apply.

We shall not learn which of those four will happen until 12 March at the earliest and perhaps not even then if the withdrawal agreement is voted down again.

My presentation to Sheffield Business and IP Centre at Sheffield Central Library on 6 March 2019 considered the consequences for IP of each of the four scenarios.  It analysed the IP provisions of the draft withdrawal agreement which will be implemented under draft secondary legislation pursuant to the European Union (Withdrawal) Act 2018 from midnight on 1 Jan 2021 at the latest if that agreement is approved by Parliament.   Such secondary legislation will come into effect at 23:00 on 29 March 2019 if the UK leaves the EU without a withdrawal agreement.  The legislation will not be needed at all if the 2017 notice is revoked.  Its implementation will be delayed until at least the end of the extension period if the 2-year notice is extended.

The presentation considers the future of the Unified Patent Court and the unitary patent.   If the 2017 notice is revoked the UPC Agreement could come into force with continued British participation so long as a challenge to the constitutionality of  German certification in the German Constitutional Court is defeated. If the notice period is extended or a withdrawal agreement is approved by Parliament continued British participation may be possible.   It is highly unlikely if the EU leaves without an agreement.

The draft secondary legislation provides for the conversion of EU trade marks and Community designs and plant varieties into corresponding national rights.  EU legislation on supplemental protection certificates and compulsory licences will be incorporated into national law.  But the Brussels Regulation and Lugano Convention could fall away without a withdrawal agreement and English and Welsh, Scottish and Northern Irish courts will lose the right to seek preliminary rulings on the interpretation of EU law from the Court of Justice of the European Union.

Should anyone wish to discuss this presentation or the effect of Brexit on IP rights generally, they should call me on 020 7404 5252 during office hours or send me a message through my contact form.  

Brexit Countdown: What you should have done to protect your IP and what you can still do

Sheffield Central Library

Author Chemical Engineer
Licence Creative Commons Attribution-Share Alike 4.0 International
Source Wikipedia, Sheffield Central Library

Jane Lambert

IP Rights and Brexit  Sheffield Business and IP Centra, Central Library, 6 March 2019 18:00

Because intellectual property protects investment in branding, design, technology and creative output, any change in the nature and extent of the legal protection is likely to impact on the businesses that rely on such protection.  Since EU trade marks, registered and unregistered Community designs, geographical indications and Community plant variety rights will cease to apply to the UK upon its departure from the EU, Brexit will have a substantial impact on all those businesses.

For that reason, I have been writing and speaking about the consequences of Brexit even before the 2016 referendum (see Were we to go - what would Brexit mean for IP? 26 Feb 2016 NIPC Law). I contributed the chapter on IP to Helen Tse's Doing Business after Brexit,  I have spoken about the topic at leading law schools (see Implications of Brexit on IP Law 19 Jan 2018). I have followed each and every turn of the Brexit negotiations in my Brexit blog in order to advise my clients accurately and comprehensively (see Brexit - Why do I follow the Art 50 (2) Negotiations when I am an IP Lawyer? 26 July 2018).

It might be thought that everything that can be said about IP and Brexit has been said but, unfortunately, that is not the case.  Unless the notification that the Prime Minister gave to the President of the Council on 29 March 2017 is revoked or the notice period is extended before the 29 March 2019 the UK leaves the EU at 23:00 on that day. The impact of this country's departure on business will depend on whether the country leaves on that date and, if it does, on whether it leaves with or without a withdrawal agreement. As I noted in my latest Brexit Briefing we still have no idea of the terms or even the effective date of our departure.

Ever since the withdrawal agreement negotiations began I have advised businesses to prepare for all eventualities including a no deal Brexit.  I have advised them to review their patent, trade mark and design registration portfolios and apply for national or as the case may be EU registrations to fill possible gaps in their legal protection,  I have advised them to read their licences, franchise, joint venture and other agreements and to draft or negotiate contract terms to fill any lacuna.   It may be too late to do some of those things but there is still much that businesses can do.

My talk will list all the issues businesses will encounter when protecting their brands, designs, technology or creative output and the possible countermeasures. By the end of my talk business owners and managers will have a much better idea of possible risks (and maybe even a few opportunities) and the steps they should take.

If you want to come, register here.  It's free but you do have to book. If you want to talk about this subject call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.