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Pay to play (Brands & IP Newsnotes - issue 3)

24 October 2016

Over the last few years, the Ministry of Justice has sought to fill the gap in its funding through repeated increases to court fees.

Most fees are now 5% of the amount claimed, up to the maximum, which has jumped from £1,920 to a whopping £10,000. Added to this, is the fee of £528 for ‘non-monetary relief’ which includes the injunction routinely sought in IP cases.

Added to the large increase in fees is the uncertainty over what fee is actually payable in IP cases specifically, where it can often be impossible to assess the value of the claim at the outset. A recent decision suggests that in a pure IP infringement case, claimants may be able to avoid paying the monetary court fee at the outset, as what they are really asking the court to award at that stage is an inquiry into what is payable rather than a cash sum. The correct fee could then be paid after the trial on liability, if the case gets that far.

The full effect of this is yet to be seen and, while it remains unclear, many claimants will opt to pay the full court fee for fear of being prevented from issuing the claim or of having their claim stayed or delayed. However, all of this has led to suggestions that, due to the difficulty in assessing the value of an IP claim at an early stage, the fees for IP claims should be dealt with differently. One solution might be to introduce a fixed court fee for issuing an IP infringement claim with ‘top up’ fees payable after a finding of liability. That would avoid the uncertainty we currently have at the outset of disputes between the parties as to whether the correct fee has been paid.

This article was first published in the Brands & IP newsnotes publication - issue 3

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