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.

In this blog we provide you with an overview of the Scottish court system so that when you or a client needs to enforce IP in Scotland, you are aware of the main issues to consider and pitfalls to avoid. There are instances when enforcing UK rights in Scotland can be strategically advantageous and a lot cheaper. It is also important to enable you to manage the risk of ambush litigation in the Court of Session.

In which court is IP enforced in Scotland?

All significant IP litigation is conducted in the IP Court in the Court of Session in Edinburgh, part of the Supreme Court of Scotland. The IP Court is part of the “Outer House” of the Court of Session and is a court of first instance, with a single judge sitting. The Court of Session also includes our court for civil appeals, the Inner House.

Within six weeks of serving the court summons (the equivalent of the claim form and particulars of claim, in a single document), parties will be in front of a specialist IP judge. The IP judges are expected to take a “hands on” approach to the early case management of disputes and will expect to see progress being made at each hearing.

In addition to the Court of Session, we have sheriff courts attached to each major town in Scotland, much like the English County Courts. Whilst almost all actions enforcing registered IP will be commenced in the IP Court in the Court of Session, cases for copyright infringement and passing off can be raised in the sheriff court. The level of IP experience will vary greatly across the sheriff court system.

Absence of pre-action Protocols

Through conversations with English IP litigators, we are aware of the onerous obligations in England to comply with the relevant practice notes concerning pre-action protocols. Whilst we acknowledge there are certainly benefits to having the position fleshed out in pre-action correspondence (particularly if defending an action) there are often occasions when a party wishes to raise proceedings quickly.

In this context, the system in Scotland can be considered rights holder friendly as there are no mandatory pre-action communications requirements in this jurisdiction. Whilst the IP judges would expect that a party asserting an IP right should first notify an alleged infringer, they are unlikely to face any consequences if they do not do so.

The lack of pre-action requirements also sits well with managing the groundless threats risks present in IP cases and judges understand the need to circumvent these risks by raising proceedings at an early stage, without extensive claim letters being sent.

Interim Orders and how to avoid ambush

As in England, applications for injunctive relief are an important part of IP litigation. In Scotland, an injunction is called an interdict.

One of the principal differences between Scotland and England is that in Scotland it is often likely that an interim interdict will be granted ex parte. There is also no requirement to provide a cross-undertaking in damages (although if at the end of an action a permanent interdict is not granted, a claim for damages for wrongful interdict may follow).  This means that third parties, such as the NHS, who may be affected by an interim interdict will be unable to claim for loss.

If the infringer has a physical presence in Scotland, an interim interdict granted in the Court of Session for UK IP rights will have effect across the whole of the UK.

Caveats. To prevent an interim interdict being granted without warning, it is important that a caveat letter is filed with the court. A caveat is a warning device which is fairly unique to Scotland. It is lodged in court on behalf of a party (known as the “caveator”) so that certain interim orders, as set out in the caveat, cannot be granted without prior notice being given. The court must be satisfied that all reasonable steps have been taken to afford the caveator an opportunity of being heard before any such order is granted. If a caveat is not in place, the first your clients will hear of the order is when the process servers arrive at their door to enforce it.

The caveat prevents an interim interdict being granted without notice, but not an order which freezes bank accounts, property or a Search and Seizure order.

A caveat can be lodged on behalf of an individual or company in the Court of Session or any sheriff court in Scotland. Which sheriff courts are chosen will depend on the places where potential actions may be raised. We would always advise brand holders for whom we act to file caveats in the Court of Session at least, and can provide further information on the filing of caveats, if that is of interest.

Stay tuned for next week's blog where we will answer two critical questions for enforcing IPR in Scotland, “How much will it cost, and how long will it take?”

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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