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Trade mark infringement

INFRINGEMENT : PATENTS COUNTY COURT : TRADE MARKS : TRANSFER : TRADE MARK INFRINGEMENT CLAIM : SUBSTANTIAL DISPUTE BETWEEN MAJOR UNDERTAKINGS : FACTORS RELEVANT TO TRANSFER TO HIGH COURT

The proper administration of justice favoured the transfer of a trade mark infringement case from the Patents County Court to the High Court.

The applicant (B) applied to transfer the proceedings from the Patents County Court to the High Court. The three respondents (W) were members of a group of companies and the third respondent ran the well known Superdrug shops in the United Kingdom. W held a Community trade mark for the word SOLAIT registered in class 3 in respect of “cosmetics; lotions and creams for the skin; sun screen products; cosmetic (sun) tanning preparations; after sun products”. W’s SOLAIT product was on the market at substantial levels in the UK, Ireland, the Netherlands and Belgium. There had been some sales in other European states too. B had launched a sun cream product called SOLEI. A company in B’s group made the product in the UK. B’s product was on the market in France, Spain, Italy and Portugal and B intended to sell more widely in Europe including the UK in due course. W contended that B’s product infringed and issued proceedings in the Patents County Court. B contended that the case should be transferred to the High Court; the dispute was a substantial one between two major undertakings; the case was complicated and not suited to the streamlined case management machinery in the Patents County Court; it would require four days to try; the value of the case also pointed to the High Court bearing in mind the substantial sums spent on the brand and the cost of rebranding if B lost.

HELD: (1) Neither side was a small or medium sized enterprise. That factor pointed firmly in favour of transfer (see para.16 of judgment). (2) The claim was more valuable than many before the Patents County Court, but it was not so substantial that value alone would mandate a transfer to the High Court (para.27). (3) The presence of complicated legal issues was a neutral factor, but the case was also factually complicated. The position in 14 countries was at stake and each of them would need to be considered in some detail. It seemed almost inconceivable that a single expert could deal with the position, including the linguistics, of all the separate countries in issue (paras 28-34). (4) The case was likely to take substantially longer than two days to hear and that was an important factor which pointed in favour of the High Court both inherently and because it provided an indication of the share of the resources of the Patents County Court which the case would occupy (para.36). (5) Looking at the matter overall and bearing in mind the overriding objective, the balance was in favour of transfer to the High Court. Although the trial was likely to come on in the Patents County Court sooner than it might in the High Court, even if expedited, the difference was only a matter of a couple of months and was not a reason why a heavyweight trade mark trial between two large organisations should employ the resources of the Patents County Court which existed to facilitate access to justice in intellectual property disputes in circumstances where the costs of litigating the matter in the High Court would have acted as a deterrent (paras 39-42).

“Lawtel” 12.09.2011