Whilst almost all substantive IP legislation and case law applies in Scotland in the same way as it does in the rest of the UK, the court procedure for enforcement of those rights is very different north of the Border.

We have pulled together a short series of briefings to guide you through some of the peculiarities of enforcing IP in Scotland and provide insights on how to navigate them effectively.

Following on from our first blog where we explained how the Scottish court system works, the second part of this series will address two critical questions: “How much will it cost, and how long will it take?” These are among the most common queries we receive from clients at the outset of a dispute.

Of course, it is an entirely appropriate and reasonable question, which any sensible client should be asking before embarking on litigation.  Whilst you would be able to answer this question with laser precise accuracy in respect of English proceedings with the “benefit" of the Jackson costs budgeting reforms, you may be less clear of the position in Scotland. We thought it might be helpful to provide you with a summary of the position in Scotland should your clients ever need to consider enforcing their IP north of the Border.

Court fees

One significant difference between our jurisdictions relates to the charge imposed by the court to commence a court action. We are aware that issue fees in England can be as high as £10,000 depending on the sum claimed. In Scotland, we have a flat signet fee of £339 for all actions in the IP Court, no matter what value. As such, if a party needs to raise an action for tactical reasons or to manage "groundless threats" risks, and has the choice of raising in Scotland or England, the relatively insignificant costs of commencing proceedings in Scotland are likely to be attractive.

Cost Budgeting (or lack of)

The Jackson Reforms did not apply in Scotland and there is no equivalent of cost budgeting in this jurisdiction. The Taylor Report has recommended a similar regime to Jackson but nothing has been put in place, nor is it likely. As such, there is no judicial involvement in budgeting of costs (known here as expenses) in the IP Court.

Given the lack of scope for recovery of pre-action costs, rights holders in Scotland often choose to have stronger claims brought into court more quickly to place an infringer under pressure of costs.

Whilst we would typically involve our internal law accountant in providing a detailed breakdown of costs involved in each stage of litigation, not having to agree that with the other side certainly appears to make it easier and quicker to have an action commenced in the IP Court as compared to the High Court.

Timescales – the “Scottish Torpedo”?

In summary, it is quicker to get actions into the Scottish courts and straightforward cases can be handled very quickly. Certainly without pre-action protocols and discovery, getting an action off the ground and into court appears to be quicker in Scotland than in England. If a rights holder's objective is to secure interim orders (even without notice) this can be a significant advantage.

However, in more complex cases we have found that the Scottish court process is almost certainly slower.  This is due to less upfront preparation, deferred document recovery, less judicial specialist expertise and relatively light-touch judicial management.  In our experience, cases with greater complexity (most patent litigation) will take longer to resolve as compared with the equivalent cases in England.

Recovery of Court Expenses (costs)

The awarding of expenses in Scotland is entirely at the discretion of the court. The general rule in Scotland is the same as in England in that expenses follow success. A successful party in Scotland would likely recover 50% of their spend on solicitors and 100% of their spend on counsel.

The Rules of the Court of Session provide that a higher than normal rate of expenses can be recovered in specific circumstances, if for example the case is of sufficient importance to the successful party or if the unsuccessful party's conduct (or the conduct of its solicitor) has been particularly blameworthy.

We do not have an equivalent of the IPEC's court cap and appreciate that this is popular with clients considering embarking on enforcement of their rights.

Stay tuned for next week's blog which discusses what you need to know about the lack of document disclosure. If you require any help navigating IPR enforcement, please get in touch with our intellectual property team who would be delighted to help.

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