Refusal of Transfer of Cases Between IPEC and High Court

Anna Hatt | September 2017

77M Limited v (1) Ordnance Survey Limited and (2) The Controller of Her Majesty’s Stationery Office

This recent case from the Intellectual Property Enterprise Court (IPEC) relates to an application by the defendant Ordnance Survey Limited (“OS”) to transfer a database rights claim from IPEC to the High Court.  HHJ Hacon ultimately dismissed the defendant’s application stating that this was a case in which a claimant’s “practical ability to retain access to the courts requires protection”.

The judge considered the factors listed under CPR 63.18(2) and Practice Direction 30(9), that is:

- whether a party can only afford to bring or defend the claim in the Intellectual Property Enterprise Court;

- whether the claim is appropriate to be determined by the Intellectual Property Enterprise Court having regard in particular to the value of the claim, the complexity of the issues and the estimated length of the trial.

The judge reviewed the case law including decisions by HHJ Birss in ALK-Abello Limited v Meridian Medical Technologies [2010] EWPCC 14 and Comic Enterprises Limited v Twentieth Century Fox Film Corporation [2012] EWPCC 13.

77M was a small/medium entity seeking the protection of the IPEC costs regime via after the event insurance. OS was a government-owned body. The judge indicated that OS’s governmental status was not of significance, noting however that low costs were appropriate for a publicly funded litigant as well as a SME.

OS argued that 77M’s conduct of the case was inappropriate for the IPEC. The judge disagreed. The judge considered that the value of the claim was not as high as suggested by OS and that the issue of value was not of great weight. The judge considered that the trial could be heard within three days, but that 77M should take all possible steps to streamline the case.

The judge considered that the decisive factor was 77M’s status as a SME seeking the protection of the IPEC’s cost regime, so that the case should not be transferred for reasons of access to justice. However, he indicated that this matter could be reconsidered at the case management conference if there had been a change in circumstances.