A unique forum for IP disputes
IP disputes, given the singularity of the UK marketplace, and the ease by which infringement can take place in the modern digital age, often present an opportunity for the aggrieved party to decide whether to take formal action in either England or Scotland. There are some important differences between the two jurisdictions, as regards IP litigation.
For client advisors, such differences can be significant, in determining strategy, and in some cases tipping the balance in making formal action worthwhile. Below, we set out some key points, relevant to litigating IP disputes in Scotland, making Scotland a unique forum for such disputes and presenting it as a genuine alternative to other jurisdictions.
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At Harper Macleod we have one of the largest teams of dispute resolution solicitors in Scotland. More than half of our solicitors are involved regularly in contentious work, giving us a breadth of litigation expertise which sets us apart. We are renowned for the range and quality of our dispute resolution expertise and our team includes some of the country’s most talented disputes practitioners.
Working out of our main offices in Edinburgh, Glasgow and Inverness, we represent clients in every sector. We are known for our high-profile client base and have one of the most prominent teams in the Commercial Court of the Court of Session and Sheriff Courts. We have been involved in some of the most complex litigations in the Scottish Courts in recent years.
"Harper Macleod has provided a first class service throughout our journey. They maintained a balanced and considered perspective on the deal throughout the process and offered guidance and direction when required. We are delighted with the quality of work by the individuals involved and how they function as a team of professionals." Michael McMahon, Managing Director, Everwarm
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Key differences between Scottish and English courts
There are no general pre-litigation disclosure rules in Scotland. Limited disclosure can be ordered by the court. Whilst the court in IP disputes take on a more proactive role in case management, disclosure is usually only ordered upon application by a party. Applications have to be specific, and “fishing” applications won’t be entertained. This limits early stage cost exposure. As such, preparing for, and commencing IP litigation in Scotland can be relatively economic. Interim orders Like courts in other jurisdictions, the courts in Scotland are prepared to grant interim preventative orders. In doing so, no express cross undertakings on damages are required, albeit that remedies remain open for damages in the event of the wrongful use of interim orders. It is also not always necessary to prepare detailed affidavits in support of an application for interim orders adding significant convenience where parties wish to move swiftly and as economically as possible at the outset.
In Scotland, interim orders can be obtained without notice to the adverse party. With this in mind it is advisable for parties who may become subject to proceedings in Scotland to lodge what are called caveats at appropriate courts, whereby they will be given advance notice of any attempt to seek an exparte interim order.
Registration of judgements
Orders granted by the English courts require registration in Scotland to have effect in relation to Scottish parties. This is a reasonably straightforward and low cost process, but a hugely important one all the same, to allow enforcement of foreign jurisdictional decisions within Scotland.
The same remedies for IP disputes are available in the Scottish courts, as in the English courts.
Scottish courts are much more limited in their application of the principles of equity, which in some cases, particularly contract law cases, can provide a reasonable degree of certainty to clients entertaining litigation. As a subsidiary point, the courts’ approach in this field underlines the need to have Scottish locus contracts drafted appropriately, so that they reflect this approach.
The Scottish courts do not apply principles of res judicata in IP disputes in a restrictive fashion, such as in the Firecraft case. This allows matters to be re-examined at court level irrespective of the presence of an IPO tribunal decision.
Cost budgeting does not apply in Scotland. Parties are able to recover costs according to a judicial scale. The cost of litigation is generally lower in Scotland than elsewhere in the United Kingdom. Rates of recovery are typically around the 50% mark, but IP disputes lend themselves to an enhanced rate of recovery. The fees of foreign (including English) solicitors can be recovered in Scottish proceedings.
Scottish court lodging costs are lower than the equivalent court fees in England and Wales. Percentage fees, relating to the level of damages sought, do not apply as court fees are fixed regardless of the level of claim.
Raising proceedings in Scotland may surprise the infringer, where the infringer is established in another part of the UK, and cause the infringer additional trouble, by forcing them to find and instruct Scottish representation. As such, Scottish proceedings can in some circumstances be tactically sensible.
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