The Intellectual Property Enterprise Court

What is it?

The Intellectual Property Enterprise Court (IPEC) is a specialist court for IP claims that has become the court of choice for many small and medium sized enterprises (“SMEs”) looking to bring claims for IP infringement. Created in 2013, the strict caps on recoverable costs and streamlined procedures, has quickly established IPEC as a cost-effective forum to hear intellectual property claims.

Where does IPEC sit?

IPEC is one of the specialist jurisdictions within the Business and Property Courts. The home of IPEC is therefore the Rolls Building in London. The current Presiding Judge of IPEC is HHJ Hacon and nominated barristers and solicitors, all experienced in IP law, sit as deputy IPEC judges.

However, district judges based in each of the six Business and Property Court centres out of London, namely Birmingham, Bristol, Cardiff, Leeds, Manchester and Newcastle, are able to hear cases on the IPEC small claims track. In addition, where it would save costs, IPEC trials will be heard outside London.

When is it the most appropriate forum?

IPEC hears intellectual property cases of any kind, relating to UK rights (and EU unitary rights, if they were issued before 1 January 2021). This includes disputes which involve matters other than intellectual property, e.g. a contractual claim which has an associated intellectual property claim element. Increasingly, IPEC has been seen as the court of first choice for many claimants involved in the litigation of IP rights and other IP related disputes.

In IPEC, a claimant can generally only claim up to £500,000 for infringement of its rights. It can hear claims valued over this amount, if both parties agree but it is important to remember that, in any event, IPEC is only suitable for shorter, less complex cases. Where the claim is such that it will require a trial of more than 2 days, it is unlikely to be suitable for IPEC.

The procedure in IPEC is governed by the Civil Procedure Rules Part 63 and Practice Direction 63. In addition to the Court Rules, there is an IPEC Guide produced by the Court.

Who can use this forum?

IPEC is designed to provide access to justice for small and medium sized enterprises (“SMEs”) and individuals involved in intellectual property disputes (mainly patents, trade marks and passing off, designs and copyright). The idea is that parties with shorter, less complex, less valuable IP claims will chose to bring those proceedings in IPEC.

There are two alternative procedures within IPEC - the multi-track and the small claims track. The multi-track procedure is described in the IPEC Guide. The small claims track is described in the IPEC Small Claims Track Guide. In general, it is the value of your claim that will dictate which track your case is allocated to.

1. Small Claim procedure. The small claims track is for suitable claims with a value of up to £10,000.

• Costs orders on the small claims track are highly restricted. The general rule that an unsuccessful party pays the costs of the successful party does not apply in the small claims track. There are only very limited circumstances, in this track, in which the court will order one party to contribute to the costs of another.

• The ability to hear IPEC small claims outside London means that businesses and individuals in the regions will have easier access to the court system to resolve certain small-scale IP disputes.

• In multi track cases costs orders will be made which are proportionate to the nature of the dispute and are subject to a cap of no more than £50,000. The procedure not only caps the overall costs which a losing party will have to pay, it also limits costs payable for each stage of the proceedings.

Why bring a case in IPEC?

• speed - it has a streamlined procedure of claims;
• ‘costs caps’ - there is fixed cost recovery, limiting exposure to adverse cost awards;
• consistency of approach - there are specialist Judges; and
• remedies - all the remedies available elsewhere in the High Court can be obtained in IPEC, including interim injunctions, orders for the payment of damages or an account of profits.

The success of the IPEC has resulted in calls to establish a similar procedure in Scotland. Even without this, there are still various benefits to litigating your IP disputes in Scotland, as set out more fully in our Handy Guide. However, the stream-lined procedures and costs cap may mean that when considering where to bring your claim, IPEC might well be the most appropriate forum to enforce your IP rights.