Massimo Osti SRL v Global Design And Innovation Ltd & Anor

On an application to set aside a court-ordered transfer to the Intellectual Property Enterprise Court, the issue is redetermined on the parties’ evidence and submissions. The restrictive principles governing reconsideration of an order made after a hearing do not apply where the original transfer was made by the court on its own initiative. Suitability for the Intellectual Property Enterprise Court depends on affordability, value, complexity and trial length. Monetary value is important but not determinative. A claim involving disputed facts, trade mark validity and descriptive use may remain suitable where the issues are within the court’s ordinary experience and can be tried within its streamlined procedure.

The claimant sought to set aside an order transferring its claims against Global Design and Innovation Ltd and Mr John Sharp to the Intellectual Property Enterprise Court. The underlying claims concerned an alleged implied trade mark licence, unpaid royalties, trade mark infringement and the validity of two trade marks.

The transfer order had been made on the court’s own initiative at the triage stage. The defendants argued that the application was governed by the restrictive principles applicable to applications under CPR 3.1(7). The central issues were the applicable procedural standard, the parties’ ability to litigate in the High Court, the value and complexity of the claim, and the likely trial length.

1. Applicable principles. The application was governed by CPR 3.3(5), because the transfer order had been made on the court’s own initiative under CPR 3.3. It was a redetermination of the transfer issue and was not subject to the restrictive principles in Tibbles SIG plc [2012] 1 WLR 2591, which concerned an order made at a hearing.
2. Transfer criteria. The court considered affordability, claim value, complexity and estimated trial length. The defendants’ ability to litigate in the High Court was a neutral factor.
3. Value. On the claimant’s best case, the net monetary value was approximately £313,581. The value of the injunction and the challenged marks could not be materially assessed without evidence. The monetary value was within the range requiring serious consideration of transfer.
4. Complexity and length. The issues concerning the implied licence, exhaustion, descriptive use under Article 14 of the European Union Trade Marks Regulation, and trade mark validity were not sufficiently complex to make the Intellectual Property Enterprise Court unsuitable. The claim could be tried within the usual two-day streamlined procedure.
5. Disposition. The factors pointed clearly to transfer. The application to set aside the transfer order was dismissed.