A landmark year in court

Author: Tessa Bucks, Partner 1999 has been a busy year for UK trade mark attorneys and lawyers in the UK. There have been a number of important decisions emanating from our courts and the Trade Marks Registry and significant developments in the field of litigation. Many seminars have been given in the UK and reams of articles written by eminent attorneys and lawyers discussing most of these issues in minutiae. I do not intend to compete with such learned dissertations, merely to summarise such items of interest which have been occurring in the field of Trade Marks in the UK this past year.

BECOMING MORE CIVIL
On 26 April 1999 the new Civil Procedure Rules (CPR) came into force, giving effect to significant reforms in litigation as recommended by one of our law lords, Lord Wolff. These have affected trade mark infringement and passing off actions, which are heard in the Courts, rather than by the Trade Marks Registry. The main objectives of the reforms are to encourage parties to resolve disputes without resorting to litigation and, where litigation is unavoidable, to streamline and therefore speed up the completion of cases.

One problem we have encountered as a result of the CPR is for those contemplating bringing infringement actions. In order to comply with the CPR, trade mark proprietors are likely to become exposed to unjustified threats actions under the Trade Marks Act 1994. The CPR allow judges to level considerable costs penalties against a party bringing an action where it has not first made reasonable efforts to resolve the dispute. Reasonable efforts are considered to include sending full details of the complaint and the trade mark rights to the offending party. However, under the Trade Marks Act threats to bring infringement proceedings against certain types of infringers (especially retailers of goods) can be actionable and carry a risk. Compliance with the CPR could in many cases therefore result in making what amounts to a threat. Thus even more care has to be taken now in any pre-action correspondence, although the ultimate benefits should lie in an increase in pre-action settlements and fewer speculative threats of action being made.

One of the most noticeable changes bought about by the CPR, is that much of the terminology previously used in connection with litigation has been changed. Thus, for example, Plaintiffs are now Claimants, Interlocutory Injunctions are Interim Injunctions and a Writ is a Claim Form. Clients have long complained about the use of "legalese" in this profession, and this is to help make litigation more understandable by using more common English words.

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