DKH Retail Ltd v Republic (Retail) Ltd

This judgment arises from an order to transfer the present case from the High Court to the Patents County Court. The order has been made by consent. The purpose of this judgment is to address a point of significance to the practice of transferring cases from the High Court to the Patents County Court which emerged from this application. The point relates to the jurisdiction to make orders like the one in question.

The action was started in the High Court. It is a claim for infringement of UK unregistered design right under Part III of the Copyright Designs and Patents Act 1988. The parties are high street retailers. The claimant, which trades as Superdry, contends that a hooded shirt sold by the defendant infringes the claimant’s design right in a product referred to as a hooded lumberjack style shirt. The defendant denies infringement.

The defendant wished to have the matter transferred to the Patents County Court. When the matter was listed before Master Price, he decided that he did not have jurisdiction to make the order. This was because CPR r30.5(3) required that applications for the transfer of proceedings to or from a specialist list must be made to the judge dealing with claims in that list and by CPR r63.3 claims in the Patents County Court form a specialist list, for the purposes of r30.5. Since he had no jurisdiction to transfer the matter to the Patents County Court, he removed the application from his list. The matter was listed before me sitting as a Judge of the High Court.

By the time the matter came before me the parties had agreed to transfer the matter. However both sides raised the matter of jurisdiction with the court since they were concerned to clarify the position of transfers from the High Court to the Patents County Court.

Mr Tappin QC appeared for the claimant instructed by Fox Williams and Ms Reid appeared for the defendant instructed by Kempner & Partners. I am very grateful to both counsel and both sets of instructing solicitors for their assistance in this matter.

The issue is whether r30.5(3) means that applications to transfer cases to the Patents County Court must be heard by a judge dealing with claims in the Patents County Court. If so then amongst other ramifications, it would mean that Chancery Masters could not order transfers to the Patents County Court.

Both sides made the same submission, that applications to transfer to the Patents County Court need not be heard by a judge dealing with claims in the Patents County Court and that Masters do have jurisdiction to transfer a case like this. Accordingly I have not heard adversarial submissions on the point. Nevertheless I accept the submission of both sides that the point is one which, although esoteric, is of sufficient practical significance for the day to day administration of intellectual property proceedings that I should address it in this judgment.

The point is important not least because hitherto, numerous cases have been transferred from the Chancery Division to the Patents County Court by Chancery Masters. Indeed if rule 30.5 has the effect it appears to have then the whole regime of transferring cases to and from the Patents County Court is called into question.

I will say at the outset that I can entirely see why, looking at r30.5 and r63.3, Master Price took the course he did. However having had the benefit of brief but detailed submissions from counsel on the point, which were not available to Master Price, and although the ways in which the various rules interrelate is not free from difficulty, in my judgment this is a case which a Master could order a transfer to the Patents County Court. My reasons are these.

I will start with the Patents County Court. The Patents County Court has jurisdiction to hear all kinds of intellectual property cases although the sources of its jurisdiction are needlessly complicated. It is part of the Central London County Court albeit that it is now administered entirely separately and sits in the Rolls Building.

CPR Part 63 is concerned with intellectual property proceedings in both the High Court and county courts After r63.1, which deals with scope and interpretation, Part 63 is divided into sections. Section I relates to patents and registered designs, section II to trade marks and other intellectual property rights and section V to the Patents County Court. (Sections III and IV are irrelevant).

Rule 63.2(1) provides that Section I applies to any claim under the Patents Act 1977, the Registered Designs Act 1949, the Defence Contracts Act 1958, and any claim relating to Community registered designs, semiconductor topography rights or plant varieties. By Rule 63.2(2) claims to which Section I applies must be brought either in the Patents Court or a Patents County Court. Rule 63.3 is in Section I. It provides as follows:

Specialist List

63.3

Claims in the Patents Court and a Patents County Court form specialist lists for the purpose of rule 30.5.

So far the position of the Patents Court and the Patents County Court is the same. However there is a difference when one takes into account other intellectual property cases. These are addressed in Section II of Part 63, i.e. r63.13. That rule provides that claims relating to the Trade Marks Act 1994 and other intellectual property rights set out in the Practice Direction to Part 63 must be started in the Chancery Division, a Patents County Court or certain other county courts. The “other” intellectual property rights referred to are listed in PD 63 paragraph 16.1 and include copyright, unregistered design right, Community design right, passing off and trade marks.

Thus the Patents County Court can hear a UK unregistered design case whereas, unless it was part of proceedings which related to a patent or otherwise were within Section I of Part 63, the Patents Court would not be the right court for such a case. The right court in the High Court would be the general Chancery Division.

It seems to me therefore that the Patents County Court is a specialist list only for the purposes of Section I of Part 63. That makes sense. It is similar to the position of the Chancery Division itself. In the Chancery Division claims for copyright and trade mark infringement are part of general chancery work. The Chancery Division is not a specialist list. The equivalent specialist list inside the Chancery Division is the Patents Court, which handles patent cases (and certain others).

Section 40 of the County Courts Act 1984 gives power to the High Court to transfer a case before it to a county court. Section 42 of the 1984 Act provides for the power of a county court to transfer a case before it to the High Court and s41 of the 1984 Act gives the High Court power to transfer a case in a county court to the High Court. In relation to proceedings within the special jurisdiction of a Patents County Court, no order under s41 may be made (s289(1) of the Copyright Designs and Patents Act 1988).

The power to be exercised to transfer any case in the Chancery Division of the High Court to the Patents County Court is the power in s40 of the 1984 Act.

CPR Part 30 is concerned with transfer. Rule 30.5(1) relates to transfers between Divisions, which is not this case. Rule 30.5(2) and (3) provide as follows:

30.5

Transfer between Divisions and to and from a specialist list

[…]

(2)

A judge dealing with claims in a specialist list may order proceedings to be transferred to or from that list.

(3)

An application for the transfer of proceedings to or from a specialist list must be made to a judge dealing with claims in that list.

In my judgment this provision on its face can only apply to transfers to the Patents County Court if the matter is one to which Section I of Part 63 applies i.e. patent cases (and the other specific kinds of cases listed in r63.2). That is because it is only in respect of those matters that the claims in the Patents County Court form a specialist list. Accordingly rule 30.5 does not apply to this case, which is a claim for infringement of unregistered design right.

Thus if the case is an intellectual property claim properly proceeding in the general Chancery Division (and not the Patents Court), it will be one to which r30.5 does not apply. Thus there is no need to refer such a claim to a judge dealing with claims in the Patents County Court. Moreover a Chancery Master will have their usual jurisdiction in such a case and can order such a claim to be transferred to the Patents County Court.

That is sufficient to justify making the consent order to transfer this UK unregistered design right action from the High Court to the Patents County Court. However the point has wider ramifications than that which I will consider next.

If the case is a patent case (or another of the kind to which Part 63 Section I applies) then both the sending and receiving courts will be specialist lists and r30.5 would appear to apply to transfers in either direction. An application to transfer must be made to a judge dealing with claims in that list. Does this mean that an application to transfer from the Patents Court to the Patents County Court has to be heard by the Patents County Court and an application to transfer from the Patents County Court to the Patents Court must be heard by the Patents Court? If that is what the rule means then the current practice, which is the precise opposite, is in breach of the rules.

In Brynley Collins v Raymond Drumgold [2008] EWHC 584 (TCC) Toulson J was faced with an application to transfer a case from a county court to the Technology and Construction Court (“TCC”), which is a specialist list – see CPR Part 60 r 60.2(1)). Toulson J held

The Application to Transfer

8.

On 25^th February 2008, the Second Defendant issued an application in the TCC to transfer the case from Cambridge County Court to the TCC. Notice of that application was given in writing to Cambridge County Court on 26^th February. The Claimants subsequently took the point that the application was misconceived because it should have first been made to the county court in question.

Correct Procedure on Transfer

9.

Section 41(1) of the County Courts Act 1984 provides that:

“If at any stage in proceedings commenced in a county court … the High Court thinks it desirable that the proceedings, or any part of them, should be heard and determined in the High Court, it may order the transfer to the High Court of the proceedings or, as the case may be, of that part of them.”

10.

Generally, an application to transfer from a county court to the High Court will be made under CPR 30.3. An application to a specialist list (such as the TCC) will be made under CPR 30.5. In each case, the application to transfer is made to the receiving court (in this case the TCC), with notice to the relevant county court. That is what happened here. Accordingly, I consider that the Claimants’ solicitors were wrong to suggest that the application had first to be made to the county court pursuant to CPR 30.2(3). That rule is concerned solely with transfers from one county court to another. It is, therefore, of no application here.

11.

Accordingly, the Second Defendant has followed the correct procedure by making this application on notice to the TCC. The next question is what principles and guidelines are relevant to the substance of that application.

If I may say so I have no doubt about the correctness of Toulson J’s judgment relating as it does to a transfer to the TCC from a county court. It indicates that r30.5(3) has a role to play in the circumstances before him. However its application to transfers between the Patents County Court and the Patents Court is problematic. Consider a transfer to the Patents Court from the Patents County Court of a patent case. It would be a transfer to a specialist list and so reading r30.5 in isolation would imply that only a judge sitting in the Patents Court could hear the application. However, unlike the position in Brynley Collins v Raymond Drumgold in which Toulson J could rely on section 41 of the 1984 Act, for patent cases s41 of the 1984 Act does not apply. That is because patent cases are in the “special jurisdiction” of the Patents County Court. So by statute a High Court judge has no power to hear such an application as a result of s289(1) of the 1988 Act. The rules of court cannot override that.

In the context of transfers between the High Court and the Patents County Court, the powers to order transfer are the statutory ones in s40 and s42 and are therefore only exercisable by the sending court and not the receiving court.

It seems to me that Rule 30.5(3) presupposes two things. First, it presupposes that when a case is being transferred to a specialist list, the sending court is not also a specialist list. That is why the rule provides that a judge dealing with claims in that specialist list should hear the application. It makes sense that a judge concerned with that specialist list should determine whether a given case should be brought into that list.

Second, the rule presupposes that a transfer application can always be heard by the receiving court even without a transfer order (as happens for the procedure relating to the TCC explained by Toulson J above).

Neither assumption is correct in the context of transfers between the Patents County Court and the Patents Court of a patent case (or other case within Section I of Part 63). As to the first, both the sending court and the receiving court are specialist lists with the same jurisdiction over the same subject matter. The differences between the Patents Court and Patents County Court are not concerned with the types of causes of action they can hear. As to the second assumption, s41 of the 1984 Act is not applicable in patent cases.

Bearing these considerations in mind it seems to me that r30.5, despite its wording, cannot apply to the transfer of cases between the Patents Court and the Patents County Court.

Mr Tappin submitted that in a case in which both the sending and receiving courts were specialist lists, the language of r30.5 allowed for the application to be made either to the sending court or to the receiving court. It happens to work as between the Patents Court and the Patents County Court because the specialist natures of those two courts is essentially the same (the differences are procedural). However I am not convinced the submission is correct. Considering an application to transfer a claim to the Patents Court, the rule requires that an application to transfer a claim to that specialist list must be made to a judge dealing with claims in that list (emphasis added).

Since the matter is not before me directly I will not decide the question. I will simply state my view that applications to transfer cases between the Patents Court and the Patents County Court may be made to the sending court because rule 30.5 has no application in such a case.

Currently intellectual property cases commenced in other county courts throughout the country are regularly transferred to the Patents County Court under CPR r 30.2 when the judge there finds it just and convenient to do so. These cases are usually copyright and passing off cases and are invariably cases within section II of part 63 rather than section I. They fall within the list of other intellectual property cases set out in PD 63 paragraph 16.1. Accordingly for such cases the Patents County Court is not a specialist list and r30.5(3) has no application. Thus judges sitting in their local county courts have jurisdiction to transfer such cases to the Patents County Court.

A difficulty might occur with a case to which Section I of Part 63 applied, but such a case should not have been commenced in a court other than the Patents Court or the Patents County Court in any case (r63.2(2)) and so the problem should not arise in practice.

I conclude that the current practice, in which applications to transfer cases to and from the Patents County Court are handled by judges of the court from which the case is to be transferred, is correct and is in accordance with the CPR.