Introduction

In This Issue Autumn 2004

In the next few months, the Patents County Court is expected to be granted an expanded jurisdiction to handle trade mark matters in England and Wales.

The Patents County Court was founded as a specialist court in 1990. Its purpose was to enable actions relating to patents and designs to be brought more cheaply, and resolved with greater speed, than in the Chancery Division of the High Court. At that time, patent proceedings in the High Court were taking typically well over a year, and in some cases several years, to resolve. The PCC saw the introduction of a new forum with a distinct set of procedures and a dedicated judge, which resulted in the faster management and hearing of patent and design disputes. Many of the reforms spearheaded by the PCC have since been more widely adopted by the High Court following the recent review of civil procedure, and now patent and design disputes in England can typically be litigated to judgment in about 12 – 18 months.

Now, the most enduring difference between the PCC and the High Court is the make-up of the legal team required to direct and present an IP case. As many readers will know, the IP profession in the United Kingdom is unusually fragmented, and, in the High Court, IP litigation may only be presented by barristers who are instructed either by specially qualified firms of patent attorneys, of which Jenkins is one, or by solicitors, instructed in their turn by patent or trade mark attorneys. In contrast, in the PCC, cases may be brought and presented by either the traditional barrister-solicitor-patent attorney team, or by a barrister and patent attorney, or by a patent attorney alone. In appropriate cases, the availability of such a streamlined legal team can avoid unnecessary duplication and significantly reduce the costs of IP litigation.

With the expansion of the PCC’s jurisdiction to trade marks, the PCC will become a true IP court. It will become possible to litigate trade mark matters with a similarly streamlined legal team. Trade mark attorneys are expected to be granted the right to litigate and present cases before the PCC. Moreover, certain specially qualified trade mark attorneys in firms such as Jenkins are already on the cusp of securing the right to conduct trade mark litigation in the High Court as well, working directly with counsel and avoiding the duplication of instructing a separate, often previously uninvolved, firm of solicitors to act as an intermediary.

The extension of the PCC’s jurisdiction to trade marks must be welcomed by trade mark owners. It is in the nature of all IP rights that they only truly exist when backed by a credible threat of enforcement. By reducing the cost of trade mark litigation, the expanded PCC can only strengthen trade mark owners’ rights.