Caljan Rite-Hite Ltd v Sovex Ltd

When proceedings are transferred from the High Court to the Patents County Court after the new procedural regime takes effect, that regime generally applies regardless of when the proceedings began. The court must nevertheless decide whether transfer is appropriate in the circumstances existing at the time of the application.

The relevant considerations include affordability, the value and complexity of the claim, the estimated trial length and the overriding objective. A claim requiring substantial disclosure, several factual witnesses and cross-examination, and unlikely to be completed within two days, may be unsuitable for the Patents County Court regime. Applications for transfer should generally be made promptly, since delay may cause unfairness and undermine the purpose of transfer.

Caljan sought rectification of the trade marks register and substitution as proprietor of the mark “Sovex”. Sovex relied on an alleged assignment, estoppel and related equitable arguments, and applied to transfer the proceedings from the High Court to the Patents County Court.

The proceedings had been issued in the High Court before 1 October 2010, but the transfer application was made after the new Patents County Court regime came into force. The dispute involved a substantial factual and legal disagreement concerning title, knowledge, belief, reliance and investment. The court had to determine whether the proceedings were suitable for transfer under Civil Procedure Rules 1998 r.63.18 and Practice Direction 30.

1. The application to transfer the proceedings to the Patents County Court was refused.

2. Under Civil Procedure Rules 1998 r.63.18 and Practice Direction 30, proceedings transferred from the High Court are subject to the new Patents County Court procedural regime. That conclusion applies even where the proceedings were issued in the High Court before 1 October 2010. The costs and steps already incurred are matters relevant to the court’s discretion and to any terms of transfer, rather than grounds for disapplying the regime.

3. The discretion required consideration of the parties’ financial position and affordability, whether the claim was appropriate for determination in the Patents County Court having regard to its value, complexity and estimated trial length, and the overriding objective. The approach in Technical Fibre Products Ltd v David Walton Bell [2010] EWPCC 011 was approved. The approach in Dame Vivienne Westwood OBE v Anthony Edward Knight [2010] EWPCC 016, concerning proceedings issued in the High Court before the new regime, was also approved.

4. The claim was unsuitable for the new regime. The issues concerning the chain of title, the alleged assignment, knowledge, belief, reliance and investment were substantial and disputed. They required disclosure, witness statements and cross-examination. The trial was unlikely to last no more than two days, and the existing three-day estimate was probably optimistic.

5. Sovex’s financial difficulties and the prospect of an earlier trial did not outweigh the claim’s unsuitability. The High Court proceedings had already been on foot for many months and Caljan had incurred substantial costs. A transfer application should generally be made as soon as possible after commencement.