The Entertainer (Amersham) Ltd v The Entertainer FZ LLC & Ors

The suitability of a claim for transfer to the Intellectual Property Enterprise Court depends on the prescribed factors considered together. The parties’ ability to afford High Court litigation is relevant, but affordability alone does not require retention or transfer. The court must assess the commercial value of the claim, including the value of injunctive relief, the complexity of the issues and the likely trial length. Brand protection and potential damage outside direct commercial competition may give an injunction substantial value. A claim may be unsuitable for the IPEC where it involves multiple jurisdictions, several parties, complex factual and legal issues, or extensive evidence, even if the recoverable damages appear modest.

The claimant brought proceedings for trade mark infringement and passing off against five defendants concerning use of THE ENTERTAINER and related signs. The defendants applied to transfer the claim from the general Chancery Division to the Intellectual Property Enterprise Court.

The application concerned the parties’ size and financial position, the value of the claim and injunction, and the complexity and likely duration of the trial. The court also considered the cross-border nature of the allegations, the number of defendants, the counterclaim for partial revocation, and the range of factual and legal issues raised.

1. Application refused. The claim was retained in the High Court.
2. Under CPR PD7, CPR 63.18 and PD30, the court considered whether either party could only afford to litigate in the IPEC and whether the claim was appropriate for that court having regard to value, complexity and estimated trial length. The overriding objective and proportionality requirement also applied.
3. The parties’ ability to afford High Court litigation was a neutral factor. Following Environmental Recycling v Stillwell [2012] EWHC 2097, affordability did not mean that the claim should remain in the High Court if other factors favoured transfer.
4. The recoverable damages were unlikely to exceed £50,000 on the defendants’ figures, but the value of the injunction was substantial. The injunction protected the claimant’s core brand, and use in relation to non-competing goods or services could still cause significant damage. The commercial importance of the marks was also demonstrated by the parties’ extensive worldwide opposition and cancellation proceedings.
5. The claim was unsuitable for the streamlined IPEC procedure. It concerned infringement and passing off in four EU countries, a proposed pan-European injunction, five defendants and disputed liability. The defence and counterclaim raised numerous issues concerning use, specification, distinctiveness, speciality, likelihood of confusion, dilution, good faith, own-name use, passing off and partial revocation. The good-faith issue alone involved numerous factual considerations, illustrated by Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch).
6. The court therefore refused the transfer application. The claimant’s costs remained subject to costs management and the requirement that approved costs be reasonable and proportionate.