IP enforcement in Scotland: key procedural differences between England and Scotland
Explore key pointers on crucial differences between IP practice in Scotland compared to the rest of the UK with Colin Hulme, Head of IP at Burness Paull from a CITMA webinar.
All substantive IP law applies in the same way across the UK, but that does not mean the approach to the procedures surrounding litigation and enforcement is the same.
In fact, there are some key differences that should be seriously considered when advising clients whether to bring IP infringement cases before an English or a Scottish Court.
Colin Hulme, Head of IP at Burness Paull, offered a fascinating insight into the nuanced differences between enforcement procedures in Scotland and England in a CITMA webinar discussion with Rachel Wilkinson-Duffy, Partner at Baker Mckenzie and CITMA President
From ambush litigation to applications for publicity orders and comparative costs, there are several issues to be aware of when litigating for or defending clients north of the border.
1. There are no formal pre-action protocols in Scotland, so you can end up in court at very short notice.
In England there is emphasis on setting out a case, detailing it fully pre-action, and giving the defendant the opportunity to respond and potentially resolve the case out of court.
There is no such expectation in Scottish courts.
Colin explained that there are no obstacles to getting a case heard in the Court of Scotland and no risk that a judge might penalise a claimant for failing to take earlier steps to prevent a case going to court.
The key takeaway here is that you can end up in court very quickly in Scotland; ambush litigation is a very real possibility.
Colin advised that, if your client has received any kind of correspondence relating to infringement, they should be prepared to go to court very quickly – possibly within days or even hours.
He also noted that for claimants the ability to go straight to court can save a lot of time and energy.
2. Interim interdicts can be obtained relatively quickly.
Claimants in Scotland can obtain an interim interdict, the equivalent of an injunction in English courts, relatively easily.
The test is similar to that in English courts – if your client can demonstrate a prima facie case showing a legally valid claim, the judge is likely to be sympathetic.
Colin noted that, in a clear case of trade mark infringement where the client can show that ongoing infringement will damage the brand, judges tend to accept that financial damages may not sufficiently compensate the claimant and that the alleged infringer should be stopped immediately.
In England, the granting of an injunction is often dependent on proof that there is a serious issue to be tried. In the US, judges are often minded to let the status quo (i.e. the infringement) continue while the case proceeds.
3. The territorial effect of an interim interdict should be taken into consideration
English courts take a much more expansive view of the territorial effect of an injunction than Scottish courts.
An English court handling a case of UK trade mark infringement involving UK parties would grant an injunction covering the whole of the UK.
In Scotland, an interim interdict will only cover the whole of the UK if the infringer has physical premises in Scotland.
If there are no physical premises, such as a case involving an online sale of an infringing product to someone in Scotland, the interim interdict will only prevent further sales into Scotland It will not stop ongoing sales in England and Wales.
4. Filing a Letter of Caveat counters the threat of ambush litigation
Companies at risk of being ambushed with IP litigation have a valuable tool at their disposal. By filing a Letter of Caveat with the Scottish Court.
This is a single page letter stating that any party applying for an interim interdict against their company will not be granted it without them being informed in advance.
This avoids the risk of an interim interdict being granted ex parte – which happens frequently in the Scottish Court - and gives the defendant an opportunity to oppose it.
It costs £150 to file a Letter of Caveat and it lasts for one year, so in Colin’s view it is well worth doing for any company facing even a small risk of litigation.
5. Document discovery and disclosure differs
The Scottish Court does not have document recovery as a standard rule.
Litigants cannot present a case that is contradicted by documents clients hold but it is not mandatory to disclose any documents that might be unhelpful.
There is a document recovery procedure, where parties can request specific documents proving or disproving facts related to the case, but this is rarely used.
6. Search and seizure procedure is more liberal than in England and Wales
Colin explained that the Scottish Court is more likely to grant search and seizure requests and that these are common in IP infringement cases, especially where dishonesty by the infringer is suspected.
Crucially, a Letter of Caveat is not triggered by a search and seizure order application, as it would alert the alleged infringer to the forthcoming raid.
Asked whether search and seizure orders are typically only granted in criminal cases, Colin confirmed that they can be easily secured for lesser infringements such as suspected IP theft.
7. Ability to publicise infringement is sought as default
As part of measures introduced to align Scottish law with the relevant EU directive the right to publicise infringement was introduced.
This is now universally sought and gives companies the right to name and shame infringing companies and detail the steps taken against them.
The infringer is liable for the cost of generating this publicity up to a maximum of £5,000, which could act as a deterrent to other infringing organisations.
Rachel clarified that in England a judge would expect the claimant to justify why the judgement needs to be published based on factors such as the need to protect consumers.
8. It can be faster and less costly to conduct a case through Scottish courts.
Colin noted that it is quicker to get to court and in straightforward cases the outcome can be rapid. However, where a case is complicated, it may take longer due to the relative lack of available judicial expertise in Scotland.
A complex case could stretch out over more than a year.
In terms of court costs, there is a flat fee of £320 whatever the value of the case in question, which is far lower than the sliding scale of up to £10,000 in England.
Overall, Colin estimated that costs may be around half those of a High Court of IPEC case in England.
These are a selection of the main differences that should be considered when determining whether to bring litigation in England or Scotland.
According to Colin, clients looking for a fast outcome and potentially a rapid curtailment of infringing activity should definitely explore bringing a case in Scotland if the infringer has premises in Scotland.