77 Ltd v Ordnance Survey Ltd & Ors

Transfer from the Intellectual Property Enterprise Court is governed by access to justice, the parties’ resources, the value and complexity of the claim, and the likely trial length. For an SME with limited means, the protection of the IPEC costs regime may be a decisive factor. The SME need not prove exhaustively that every alternative source of litigation funding is unavailable. That factor remains subject to the interests of justice and the other transfer considerations. A party’s ability to afford High Court litigation does not, by itself, require transfer. The court may leave transfer open for reconsideration at a case management conference if the case cannot fairly be tried within the IPEC time limit. On the evidence, the serious risk that transfer would block access to justice outweighed the other considerations.

77M, an SME, applied to transfer its intellectual property claim from the IPEC to the general Chancery Division. Ordnance Survey opposed the application and relied on the value, complexity and estimated length of the proceedings, as well as 77M’s conduct of the litigation. 77M relied on the IPEC costs cap and argued that transfer would make continuation of the proceedings financially untenable.

The court considered the factors in ALK-Abello Limited v Meridian Medical Technologies, [2010] EWPCC 14, and subsequent guidance in Comic Enterprises Limited v Twentieth Century Fox Film Corporation, [2012] EWPCC 13, Environmental Recycling Technologies, [2012] EWHC 2097 (Pat), and Destra Software Limited v Comada (UK) LLP, [2012] EWPCC 39. The central issue was whether the interests of justice required the claim to remain in the IPEC.

1. Application dismissed. Ordnance Survey’s application to transfer the proceedings to the general Chancery Division was dismissed.
2. The court applied the transfer factors in CPR 63.18(2) and Practice Direction 30, paragraph 9. Relevant considerations included access to justice and the parties’ ability to fund proceedings, the value of the claim including any injunction, the complexity of the issues, and the estimated length of trial. The ultimate question was what the interests of justice required.
3. 77M’s status as an SME and its limited financial resources made the IPEC costs regime highly important. It was not necessary for an SME to prove exhaustively that it could not obtain loans or other funding before relying on the protection of the IPEC costs cap. The absence of any undertaking by Ordnance Survey to limit 77M’s costs exposure meant that the risk of a substantially higher costs liability remained.
4. The parties’ respective status did not make the government-owned character of Ordnance Survey a separate factor. The nature of the parties was neutral. The pleaded value of the claim and the potential value of an injunction carried little weight. The number of pleaded issues overstated the real dispute, and the court was not satisfied that a fair trial could not fit within three days.
5. The court did not find that 77M’s conduct had been so inappropriate to IPEC procedure as to support transfer. Nevertheless, the case might be revisited at the case management conference if, despite case management, it could not fairly be tried within the IPEC limit. 77M was expected to take all possible steps to streamline the case.
6. Access to justice was the most important factor. The serious likelihood that transfer would practically block 77M’s access to the courts required the claim to remain in the IPEC.