GUERNSEY OPENS IP OFFICE; EURODEFENCES AGAIN

Guernsey sets up IP office

The IPKat has learned from his friend Alex Turnbull that the Bailiwick of Guernsey Intellectual Property Office will be opening on 1 June 2006 to receive trade mark registrations, although designs will remain a re-registration process and patents still await further legislation.

Background on Guernsey here and here
Guernsey cows here


Doncaster 1, Bolton 0

The IPKat's attention has been drawn to Friday's decision of the Court of Appeal [2006] EWCA Civ 661 (Lord Justices Mummery and Longmore, Mr Justice Lewison) in Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical 100 Ltd. This is the second recent Court of Appeal ruling that summary judgment on an IP infringement action may not be given where a Eurodefence is raised, the first being Sportswear v Stone Style, noted here by the IPKat). The IPKat hopes to make further comments on this case when he's had a chance to read it carefully. In the meantime, he offers you these words from Lord Justice Mummery:

"I doubt, however, whether the decision to have or not to have a trial of the action is much affected by the fact that it is heard by a specialist judge. I see no objection, for example, to the use of judges or deputy judges, who are not intellectual property specialists, to hear and decide applications for summary judgment in this field. I mention this topic and wish to say a little more about it for two reasons. First, as a result of hearing some recent appeals against the grant of summary judgments in a variety of areas of law, I have some general concerns about the use of the summary judgment procedure. Secondly, I am aware of views recently aired in the profession questioning the "efficiency" of using non-specialist judges for summary judgment applications in intellectual property cases.

In my opinion, the decision whether or not an action should go to trial is more a matter of general procedural law than of knowledge and experience of a specialised area of substantive law. All judges, specialist and non-specialist, are experienced in procedure and practice. Procedural justice is the judicial specialisation par excellence. It may take a little longer for the application to be opened to a non-specialist judge, but that may be no bad thing. I am confident that all judges to whom such applications are likely to be made will have the necessary procedural expertise to sort out those cases that can properly be disposed of without a trial. (I add that the leading practitioners' text book on trade mark law (Kerly 14th edition 2005) contains no discussion of summary judgment procedure in infringement actions. That is an indication that the decision whether or not to grant summary judgment is more one of general procedure and practice than specialist expertise in substantive trade mark law.)

I also wish to say a few words about the litigation expectations and tactics of claimants and defendants. Claimants start civil proceedings (including intellectual property actions) in the expectation that they will win and often in the belief that the defendant has no real prospect of success. So the defence put forward may be seen as a misconceived, costly and time-wasting ploy designed to dodge an inevitable judgment for as long as possible. There is also a natural inclination on the part of optimistic claimants to go for a quick judgment, if possible, thereby avoiding the trouble, expense and delay involved in preparing for and having a trial.

Everyone would agree that the summary disposal of rubbishy defences is in the interests of justice. The court has to be alert to the defendant, who seeks to avoid summary judgment by making a case look more complicated or difficult than it really is".

IPKat co-blogmeister Jeremy raised the issue of whether specialist judges should be deployed in applications for summary judgment in an article published in the first issue of the Journal of Intellectual Property Law and Practice (you can read it in full here) and he is most unconvinced that the questions he has raised have been fully answered here. He also wonders how relevant Lord Justice Mummery's personal experience is, given that His Lordship has been sitting in the Court of Appeal for the past decade, while great changes have (i) actually or (ii) apparently occurred at trial level in the High Court.

Left: the IPKat is roaring for further review of this very difficult issue

The IPKat calls for a full and thorough review of (i) the deployment of specialist judges and (ii) the availability of Euro-defences as a bar to summary judgment in IP infringement actions. If specialist judges make no difference here, perhaps we can dispense with them in all cases. And if Eurodefences can block IP protection, perhaps a Brussels-led rethink of the balance between IP protection and competition law is needed.