Although the same UK/European-wide IP legislation and case law applies in Scotland as it does in England, Wales and Northern Ireland, it is important to remember that Scotland is an alternative venue within the UK for IP disputes and litigation.
Where there are differences in approach, these tend to relate to court procedure, terminology and enforcement, as opposed to substantive IP laws. In particular, the remedies available in Scotland closely mirror those available in England, with one of the most common and useful of these in IP cases being injunctive relief including interim injunction. In Scotland these are known as interdict or interim interdict.
Background
Blocking injunctions in copyright and, more recently, in trade mark cases are remedies increasingly requested by rights holders in the English High Court. In contrast, these vehicles have not yet been employed in the Scottish courts. However, there is no reason why using the Scottish courts should not be viewed as an alternative viable option in the UK for this very useful type of remedy. In copyright cases the Scottish Court of Session (the equivalent to the English High Court) can grant such blocking orders, which are based on Section 97A of the Copyright Design and Patents Act 1988 ( implementing Article 8 (3) of the so-called InfoSoc Directive) which equally applies north of the border.
A trickier issue for the English courts has been whether, absent any similar statutory basis, such an injunction can be granted in trade mark cases. Article 11 of the IP Enforcement Directive states : "Members shall also ensure that right holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8 (3) of the [InfoSoc Directive ]."
This provision was not implemented by the UK Government into local UK trade mark law on the basis that there was no need to do so due to Section 37 (1) of the Senior Courts Act 1981. It states "The High Court may by order (whether Interlocutory or final) grant an injunction ....... in all cases in which it appears to be just and convenient to do so." Notwithstanding this, the position in regard to trade marks and, for that matter, patents was not beyond doubt until the recent case of Cartier and Others against BSkyB & Others [2016] EWCA CIV658 9 ('Cartier'). The Court of Appeal upheld Arnold J's decision [2014] EWCH 3354(Ch), resulting in victory for the trade mark owners. In so doing it confirmed that this type of blocking injunction can indeed be obtained against intermediaries in trade mark as well as in copyright cases. The Court of Appeal referred to the guidance set down by the Court of Justice of the European Union (CJEU) in L'Oreal SA and Others v eBay International AG and Others (C-324/09). There the court noted that despite the fact that the UK had not implemented Article 11, its national law required to be applied so far as possible in light of its wording and purpose. ('the Marleasing principle')
What is the position in Scotland for blocking orders?
Where the order relates to copyright infringement the Scottish Court will have the same power as the English High Court. However, Section 37 (1) of the Senior Courts Act 1981 does not apply in Scotland but applies only to the English High Court. Does this mean that the Scottish Court of Session is deprived of the ability to grant this type of remedy in, at least, the case of trade marks?
In the writer's view, the answer is a firm 'no'. This is because Scotland has its own equivalent to Section 37(1). This is section 47(2) of the Court of Session Act 1988, which states, with regard to cases involving interim interdict and other interim orders: "...in any cause... the Court may, on the motion of any party to the cause, make such order... regarding the subject matter of the cause, as the Court may think fit".
This gives the Court of Session very wide discretion to grant interim interdict orders and is similar in meaning to the Section 37(1) test, namely that the Court must consider it "just and convenient" to grant the order in question.
The Scottish provision must, like section 37(1), be applied so far as possible in light of the wording and purpose of Article 11 of the IP Enforcement Directive. Whilst it has not yet been used as a vehicle to secure an interim interdict in an IP blocking injunction case against intermediaries, there is clear scope to do so. It is also helpful that whilst the Scottish Court of Session is not bound by decisions of the English Court it will regard them as highly persuasive, especially where the substantive law in question is UK-wide. Thus the Scottish Court of Session is very likely to follow the approach of the English Courts in Cartier in applying the tests as to whether in the particular circumstances of the case the Section 47(2) provision and Article 11 can be employed to grant the interim interdict concerned.
Preventing Large Scale Infringement via the Scottish Courts
There may be advantages in choosing Scotland for such litigation. For example, the interim interdict process is very swift and cost-effective. In some cases these can be obtained without notice on an ex parte basis. There are no pre action protocols nor cost budgeting. Nor is there a need for any formal cross undertaking in damages to be given. The court issue fee is fixed at £214 and overall the Court regime is highly competitive when it comes to costs. Furthermore, the Court of Session (which notably is a designated EU trade mark and EU registered design right court) has specific and effective IP Case Management rules which bear similarities to those of the English IPEC. It also has several specialist IP Judges to offer.
In summary, it is worth considering the option of the Scottish Court of Session as a means to clamp down on large scale infringements being facilitated by intermediaries.
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