If you want to take advantage of the benefits of claiming in the
Patents County Court, claimants need to conduct the litigation in
an appropriate manner, as demonstrated by the case of Comic
Enterprises Ltd v Twentieth Century Fox which concerned Glee
trademarks. Liane Bylett in our Commercial Disputes Team
considers the importance of this decision.
SMEs wanting to take advantage of the benefits of the Patents
County Court must conduct themselves in a manner which is suitable
for the PCC system. This was the indication of the Court in
the recent case of Comic Enterprises Ltd v Twentieth Century
This builds on the recent reforms to the Patents County Court
here to see our earlier article), which were aimed at
increasing access to justice in respect of lower value IP
litigation, particularly for SMEs. Claims issued in the PCC are
subject to a streamlined procedure which is cheaper (due to a costs
capping system), quicker and more informal. The intention is that
SMEs are not deterred from pursuing IP disputes due to the risk of
significant adverse costs awards in the High Court.
Comic Enterprises Ltd v Twentieth Century Fox 
Comic Enterprises Ltd runs a number of comedy clubs
in England called "The Glee Club" or "The Glee
Comedy Club". Comic Enterprises has owned the trademark
"the glee CLUB" for classes 25 (clothing) and 41
(entertainment services and other similar services) since
1999. Comic Enterprises issued a claim in the PCC for
trademark infringement and passing off against Twentieth Century
Fox, which produces the popular US TV programme
The defendant, Twentieth Century Fox, made an application for the
case to be transferred from the PCC to the High Court. The
application was primarily based upon the value of the claim, which
is far in excess of the £500,000 damages cap which applies to
the PCC, and the complexity of the factual and legal issues. The
defendant argued that if the case remained in the PCC it would
involve "shoehorning this case into a two day window with the
streamlined procedure of limited disclosure, cross-examination and
Needless to say the application was hotly contested by the
claimant, Comic Enterprises Ltd. It was argued that the case should
remain in the PCC because it would be fairer upon the claimant,
which is an SME, and would allow it greater access to justice. The
claimant was particularly concerned about the potential for
significant adverse costs in the High Court, whereas the PCC cost
capping system limits the claimant's adverse costs to
Factors a court will consider for using the Patent County
The Court confirmed that the factors which it will
consider when considering whether a case should be dealt with in
the PCC are as follows:
Financial position of the parties;
Value of the claim;
Complexity of the issues;
Estimated length of trial;
Importance of the claim to the general public.
Despite the claimant's status as an SME and
concerns about its financial status, the Court did not feel that
this was a case where the claimant would actually risk going under
as a result of the costs of High Court litigation.
The deciding factor in this case was the claimant's conduct.
The judge ruled that the claimant was "running this case as if
it is a piece of full scale High Court litigation" because it
failed to narrow the issues and refused to provide further
information. The Court felt that the claimant was trying to
"have its cake and eat it" by conducting the case as if
it were in the High Court (rather than the streamlined procedure of
the PCC) and yet still trying to take advantage of the PCC costs
cap of £50,000. Accordingly the case was transferred to the
The decision in Comic Enterprises Ltd v Twentieth
Century Fox makes it clear that potential claimants who wish
to benefit from the costs capping system of the PCC, should conduct
their cases in a manner which is appropriate for the streamlined
procedure of the PCC. This includes ensuring compliance with
pre-action protocols (including the exchange of information before
proceedings are issued) and narrowing the factual / legal issues as
far as possible. It is clear that if parties try to conduct the
case as if it were full blown litigation, there is a significant
risk that the Court will transfer the matter to the High
This articleis provided for information purposes only and does
not constitute legal advice. Professional legal advice should be
obtained before taking or refraining from taking any action as a
result of the contents of this document.
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