Court Fees in Intellectual Property Claims

In March 2015, Court Fees for civil claims were significantly increased, with the stated aim of achieving financial stability for the courts; money claims valued at over £200,000 now require an issue fee of £10,000. The increase in court fees also served as a deterrent for claims with little merit. However, there has been some speculation about the impact of the court fee increase on intellectual property claims.

The court fee for a monetary claim is substantially greater than that required for an injunction, and there had been discussion in the field of intellectual property disputes as to the possibility of not paying an issue fee for a money claim. That really comes down to the fact that intellectual property claims typically proceed on the basis of what is known as a split trial, meaning that liability is assessed first then, if a claimant is successful at trial, in effect a second trial takes place to determine the level of loss a Claimant has suffered as a result of the infringement.

It had been suggested that due to the nature of intellectual property claims, a claimant need not pay for a monetary claim when issuing its claim, even if it put a value on the claim of, say, £70,000. This suggestion was on the basis that a claimant in intellectual property claims cannot assess its loss until it has had the benefit of the trial process to get a more informed idea as the extent of the infringement. A recent case in the High Court commanded the review of this theory - Lifestyles Equities CV & Anor v Sportsdirect.com Retail Ltd and others [2016] EWHC 2092.

In the Sports Direct case, the Claimant issued a claim for trade mark infringement and an additional claim for breach of contract, and only paid the issue fee for an injunction. The court was asked to consider whether the claimant should have paid a court fee for a monetary claim. The presence of the additional contract claim was deemed by the judge to bring the claim into the realms of money claim and the judge found that the claimant should have paid the issue fee for a money claim at the time of issuing. However, the judge did comment that if the additional contract claim had not been included, the issue fee for an injunction would likely have been sufficient. There are various additional factors to consider when using that approach, including the requirement of an undertaking, to pay any further issue fee upon pursuing an inquiry as to damages.

The above is a positive confirmation for claimants in intellectual property disputes because it means that the barrier to claimants (of a substantial issue fee) could be removed, meaning claimants can reduce the initial costs incurred in bringing legal proceedings and get the ball rolling, so to speak, before having an opportunity to re-assess their case, if necessary, upon receipt of a proper defence from a defendant.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdainelslaw.com.