May 13, 2022
Judicial reminders on how to use IPEC
Judicial reminders on how to use IPEC

IPEC isn’t being used properly by some of the legal profession and, as a result, brand owners are paying too much for what should be a forum for straightforward, streamlined, and cost-conscious IP litigation. 

Don’t just take our word for it though - here are some quotes from IPEC judges over the last few years.  It is clear that the IPEC judges are seeing the impact of the disproportionate fee-generating machine that is the City law firm and it is high time these behaviours were challenged and tackled at the source.  The legal profession, collectively, should be much nimbler in IPEC than in the High Court.

Match Group LLC v Muzmatch Limited [2022] EWHC 941 (IPEC) (April 2022), Nicolas Caddick Q.C:

This is an action by the Claimants for trade mark infringement and passing off… Both sides assert that the case is simple or straightforward. Despite this and despite this being heard as a two-day trial in the Intellectual Property Enterprise Court (“IPEC”), there were 21 lever arch files of documents, 4 lever arch files of authorities and each side’s opening submissions ran to more than 70 pages.”

Cormeton Fire Protection Ltd v Cormeton Electronics Ltd & Anor [2021] EWHC 11 (IPEC) (January 2021), David Stone:

“…As will be apparent, this was a large number of issues to be determined within the ambit of the usual IPEC two day hearing. Much of the trial was taken up by only a few of the issues. Many issues were covered only briefly, and some not at all. To decide the case, it is not necessary for me to examine in detail every controversy that arose. I have therefore, in this judgment, dealt only with the issues that make a difference to the outcome of the case, and have ignored those controversies which, though fiercely argued, are irrelevant to the outcome”.

Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) (December 2020), David Stone:

“On the first day of the two-day trial, counsel for the parties asked the Court to sit early, late, and through half of lunch in order to complete the evidence. The Court sat for an extra two hours on top of a usual sitting day of 5 hours. When parties agree to take advantage of the IPEC costs cap, they thereby agree to fit their case within the IPEC case limits. They must therefore trim their sails to ensure that the case can be determined within the allocated time. In this case, that could readily have been achieved, including by not cross-examining the experts.”

Bhayani & Anor v Taylor Bracewell LLP (Order) [2018] EWHC B5 (IPEC) (February 2018), David Stone:

“In the IPEC, the default position is that applications are to be dealt with without a hearing, unless the court considers it necessary to hold a hearing (CPR63.25(3)). This is a matter for the court's discretion, and the party seeking a hearing will need to satisfy the court that a hearing is "necessary", including by setting out in writing why a hearing would be more cost effective….

“It is therefore clear to me that allowing these amendments at this late stage would mean the vacation of the trial date, and would require the transfer of this matter out of the IPEC as the hearing is very likely to exceed 3 days. That is not proportionate. Nor does it meet the cost benefit test. The proposed amendments should not be allowed.

In my judgment, this application was always doomed to fail. It was therefore unreasonably brought. The request for a hearing was also unreasonable.”

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