Craft Focus - October/November 2022 (Issue 93)

85 ACID To find out more, visit matter such as copying of a non-registered design? Any judge hearing the matter will have had training to hear IP matters but from experience non-IP specialist judges are less likely to consider awarding any costs than IP-specialist judges. Cease & Desist letter. How much does it cost for a lawyer to draft a cease-and-desist letter? This depends on the content of the letter and the amount of infringing works being included but as a rule somewhere between £400 - £500 + VAT defending a claim What is the pre-action protocol? This is a set of steps that the court expects parties to take before they issue court proceedings. The main ones are that a letter before action (cease and desist) letter should be sent, and the parties should make efforts to resolve the dispute. These aren’t rules but there can sometimes be costs penalties if the protocol is not followed. Counterclaim - What is a counterclaim, and can it contain a monetary value for the claimant to pay if unsuccessful at trial? A counterclaim is a claim like any other claim except that it is issued in response to a claim being issued against a Defendant and is served by the defendant at the same time as their defence. Counterclaims are normally to have registered rights declared invalid or for groundless threats. Directions & List of Issues - Does the court issue directions without a meeting with the parties to the action? In SCT directions are normally set by the court without a hearing. Trial Prep and Trial - If I don’t want to attend trial and want the court to decide the matter – do all parties have to agree to this? No, one party can choose not to attend whilst the other party attends. In this scenario the court will consider the written evidence and statements that both parties have provided, and anything said by the party present at the trial. If you are not attending the trial, you must inform the court in writing that you are not doing so, if you do not inform the court, they will consider that you are not pursuing your claim. MISCELLANEOUS Are parties encouraged to mediate before trial in the SCT? Yes, parties are referred to the Small Claims Mediation Service which is done over the telephone. However, the mediators are not IP specialists. How do the court assess/calculate damages? This is based either on the loss you’ve made or the profit the defendant has made. The defendant should provide evidence of their level of sales, and you should provide evidence of your profit margin on the products and the court will make a rough calculation. If I use a solicitor for some drafting, i.e. claim form or defence to counterclaim, can I claim their costs back? Generally, not. You can claim a small set amount back, but it is not usual for anything above this to be awarded. How long does the action take from issue of a claim to trial? I would bank on it taking between 9 and 12 months. What happens if I win at trial? Will damages and costs be awarded then or at a later hearing? Damages and costs will normally be dealt with at the same hearing unless the matter is complex. What happens if I lose my claim? If you lose your claim, you may be ordered to pay a small amount of costs and expenses of the other side (unless you have acted unreasonably in which case a higher costs award might be made). The other side will also be able to continue their activity. Whilst the Small Claims Track (SCT) is a good initiative it can still sometimes seem a little complicated and, whilst much can be done yourself, some help and guidance from an IP lawyer can save time and give you peace of mind. ACID members can access initial free advice from a legal affiliate and benefit from a reduction in hourly rates. And don’t forget that if you are successful in making your claim, you can publicise the result which sends a clear deterrent message out to any copyist/ competitor. ACID is experienced in this approach – no-one likes to be named and shamed.