DKH Retail Ltd v Republic (Retail) Ltd

Applications to transfer intellectual property proceedings to the Patents County Court are governed by the statutory transfer powers and the true scope of the specialist-list rules. CPR r 30.5 applies only where the Patents County Court is a specialist list for the relevant claim. It does not apply to unregistered design right, copyright, passing off or other claims falling within Section II of Part 63. Such proceedings may be transferred under section 40 of the County Courts Act 1984 by the court from which they are transferred, including by a Chancery Master. The same approach applies to transfers between the Patents Court and the Patents County Court in patent cases, because the statutory restrictions on transfer cannot be overridden by procedural rules.

The claimant brought proceedings in the High Court for infringement of UK unregistered design right under Part III of the Copyright Designs and Patents Act 1988. The defendant sought transfer to the Patents County Court. Master Price considered that CPR r 30.5(3) required the application to be heard by a judge dealing with claims in that specialist list and therefore removed it from his list. The parties subsequently consented to the transfer but asked the court to clarify the jurisdictional issue. The central question was whether applications to transfer claims to the Patents County Court had to be heard by a judge dealing with claims in that court.

1. The consent order transferring the unregistered design right action to the Patents County Court was properly made. The relevant statutory power was section 40 of the County Courts Act 1984.

2. Under CPR r 63.3, claims in the Patents Court and Patents County Court form specialist lists only for claims within Section I of Part 63. Section I concerns patents, registered designs and the other specified rights listed in r 63.2(1). An unregistered design right claim falls within Section II and is not, for this purpose, a claim in the Patents County Court specialist list.

3. Accordingly, CPR r 30.5 did not apply to the present claim. There was no requirement for the transfer application to be made to a judge dealing with claims in the Patents County Court. A Chancery Master retained the usual jurisdiction to order transfer under section 40.

4. The court considered Brynley Collins v Raymond Drumgold [2008] EWHC 584 (TCC). That decision correctly recognised the procedure for transferring a case from a county court to the TCC, where the statutory power in section 41 of the 1984 Act was available. Its reasoning did not resolve transfers between the Patents Court and Patents County Court, because patent cases fall within the special jurisdiction of the Patents County Court and section 289(1) of the 1988 Act prevents a High Court judge exercising the ordinary section 41 power.

5. Rules of court cannot override those statutory limits. The court expressed the view, without deciding the point as it was not directly before it, that applications to transfer patent cases between the Patents Court and Patents County Court could be made to the sending court because r 30.5 had no application. The existing practice of applications being handled by judges of the sending court was held to be correct.

First instance decision. The judgment arose from an application to transfer proceedings from the High Court to the Patents County Court.