Cheaper court fees in IP Claims: Can it be true?

The recent heavy increase in Court fees has ignited a debate whether an IP claim can be issued without specifying the monetary remedy sought, potentially saving a £10,000 fee!

By Tony Catterall, head of the intellectual property team at Taylors.

The Court fee for a non-money claim (such as an injunction) is fixed at £528 in the High Court yet the fee for a money claim over £15,000 ranges up to a maximum of £10,000.

The judgment of Chancery Master Clark in the case of Lifestyles Equities CV v Sportsdirect.com has addressed this issue. The Court was clear that because IP claims are heard in two parts (i.e. an initial ruling on liability followed by an assessment of damages or an account of profits once the Defendant’s liability has been established) it is not until a Claimant elects for a remedy in damages after winning on liability that it can be said that its claim is one to recover money. What does this mean for IP Claimants? Can proceedings be issued for the modest Court fee of £528, provided an undertaking is given on the Claim Form that the larger fee for a money claim will be paid if the Claimant elects for an inquiry once the Claimant has won on the merits? Further, can a Claimant who elects for an account of the infringer’s profits avoid paying any further Court fee? The answer appears to be yes. It is expected that the Lifestyles Equities case will prompt some lively argument - not least with the Court staff when Claim Forms are being issued. However this is very good news for those IP Claimants previously reluctant to issue claims because of the upfront Court fees involved.