New Supervising Judge for the Business and Property Courts in Wales

Author Ham - Licence CC BY-SA 3.0, Source Wikipedia

 

Jane Lambert

Mr Justice Michael Green has been appointed as the Supervising Judge of the Business and Property Courts in Wales from 1 Oct 2024 for the next years.  He will also sit as Supervising Judge for the Business and Property Courts of the Midlands and Western Circuits for the same period.

The Business and Property Courts in Wales consist of 3 specialist jurisdictions: 

• the Chancery Division, 
• the Circuit Commercial Court in Wales; and 
• the Technology and Construction Court ("TCC"). 

Those Courts are based in Cardiff but Business and Property Court judges also sit in Mold from time to time and other court centres in Wales as and when required.  Mr Justice Michael Green will be assisted by His Honour Judge Jarman KC, the Chancery judge for Wales, and His Honour Judge Keyser KC, the Circuit Commercial Court Judge for Wales.   Judge Jarman also hears Circuit Commercial and TCC cases and Judge Keyser Chancery and TCC ones.  The Supervising and Specialist Circuit Judges are supported by several specialist district judges.   Profiles of the judges of the Business and Property Courts in Wales can be found on the Courts and Tribunals Judiciary website.

Although the Regional Business and Property Courts website makes clear that the Patents Court list remains in London, para 16.1 of the Part 63 Practice Direction states that most other intellectual property claims can be issued and tried in Wales. Having said that, para 16.3 of the same Practice Direction warns that the Caernarfon and Mold hearing centres have no jurisdiction in relation to registered trade marks.

The small claims track of the Intellectual Property Enterprise Court ("IPEC") hears claims for £10,000 or less falling within para 16.1 of the Part 63 Practice Direction in Cardiff (see IPEC Small Claims Track IP Litigation in Wales of 13 July 2019).  That court cannot award interim injunctions but it can grant final injunctions, delivery up of infringing items and on on.

Although CPR 63.2 (2) requires any claim falling within CPR 63.2 (1) to be brought in the Patents Court or the IPEC, para 4 of the Patents Court Guide provides that If the parties so desire, for the purpose of saving time or costs, the Patents Court will sit out of London.  Para 1.6 of the Intellectual Property Enterprise Court Guide contains a similar provision.  To my knowledge, the Patents Court has sat in Manchester and Birmingham and IPEC has also sat in Birmingham but it does not happen very often.

Anyone wishing to discuss this case may call me on 020 7404 5252 during office hours or send me a message through my contact form at all other times. 

A Judicial Super Highway for North Wales

Author Dave Smethurst Licence CC BY-SA 2.0 Source Wikimedia Commons 

 

Jane Lambert

According to the updated guidance from the Department for Levelling Up, freeports are intended to attract external investment and stimulate innovation.  If the recently announced Anglesey Freeport achieves those objectives there will be a need for a cost-effective local forum for the resolution of business disputes.  Parties from that area now have the choice of litigating in London, Liverpool, Cardiff or possibly Mold which adds substantially to their costs.  The obvious solution is to extend para 1.1 of Practice Direction 57AA to the Caernarfon District Registry and the County Court at Caernarfon.

CPR57A and Practice Direction 57AA establish the Business and Property Courts of England and Wales.  These are the Royal Courts of Justice in London and the Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle District Registries and County Court hearing centres.  When they were first launched in 2017 the Chancellor referred to the Business and Property as a "judicial super highway" (see my article Launch of a Jusicial Super Highway  12 July 2017 IP Northwest).

The Business and Property Courts undertake the following work:

• the Admiralty Court, 
• the Business List, 
• the Commercial Court, 
• the Circuit Commercial Courts, 
• the Competition List, 
• the Financial List, 
• the Insolvency and Companies List, 
• the Intellectual Property List, 
• the Property, Trusts and Probate List, 
• the Revenue List, and 
• the Technology and Construction Court.

The County Court in Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester, Newcastle and Preston also do all the work that falls under the jurisdiction of the courts and lists that make up the Business and Property Courts with a number of exceptions.

Caernarfon already has a Chancery District Registry which means that an intellectual property claim other than one concerning patents, registered designs, plant varieties, semiconductor topographies and trade marks could be issued out of the District Registry and County Court there.  In practice, any County Court claim would almost certainly be transferred to the Intellectual Property Enterprise Court in London ("IPEC"). It appears from the Circuit Commercial Courts in Wales page of the Courts and Tribunals Judiciary website that the Circuit Commercial Court in Mold is part of the Business and Property Courts in Wales. Applications for interim injunctions in an IP case issued out of Caernarfon could therefore in theory be made to Judge Keyser KC or Judge Jarman KC sitting in Mold.   According to para 1.2 of the Intellectual Property Court Guide, small IP claims can be heard in Cardiff as well as Liverpool and London but not in North Wales.

The option for Welsh litigants of bringing their claims in Liverpool, London or elsewhere in England would cease were Wales to establish a separate court system (see my article "A Separate Welsh Legal Jurisdiction"  of 20 Feb 2021). In the eventuality, it would be imperative for the Caernarfon District Registry to become part of the Business and Property Courts in Wales and perhaps other Business and Property Court District Registries to be established in central and southwest Wales. As the Senedd  Cymru can now make primary legislation for Wales, the argument in favour of establishing a separate Welsh court system is likely to strengthen.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page.

The IPO's Welsh Language Policy

Author Diomedea Exulnns  Licence CC BY=SA 3.0  Soutce Wikimedia Nant Gwrtheyrn

 

Jane Lambert

Occasionally I am asked why I spend time and money on learning Welsh. After all, so the argument runs, only a few hundred thousand speak it and nearly all of them speak also English. The answer is the same as the reason for learning any language.  A language is the key to a treasure house of ideas and information not all of which are translated or translated well.

Ideas and information are intellectual assets  They take several forms: a line of verse, a catchy song,  an elegant solution to a technical problem or an unforgettable slogan.   They are the product of skill and labour and sometimes genius.   To incentivize their generation the law protects them.  It is that legal protection that we call intellectual property.

Ideas that are generated in Welsh can be protected in Welsh.  The Intellectual Property Office which is headquartered in Newport has operated a Welsh language scheme since 3 Oct 2007.  It was prepared in accordance with the guidelines of the Welsh Language Service pursuant to s.21 (3) of the Welsh Language Act 1993.

Paragraph 1 of that scheme promises "that, in the conduct of public business, it will treat the English and Welsh languages on a basis of equality so far as is both appropriate to the circumstances and reasonably practicable."  The document continues that, where possible, the IPO will explain and offer the IP system in Welsh to those customers wishing to register their IP rights in the United Kingdom through the medium of Welsh.  

Rule 14 (1) of the Patents Rules 2007 which came into effect on 17 Dec 2007, requires the contents of all documents contained in a patent application to be either Welsh or English.  However, while the English language patent forms are available online, Welsh speaking applicants or their agents must call 01633 814936 or email information@ipo.gov.uk if they require a Welsh version of any of the IPO's forms/booklets.  According to David Pearce, no patent applications in Welsh had been received by the Office by 28 Jan 2008 (see Welsh patent applications: the results are in! 28 Jan 2008 IPKat).

There is no equivalent to rule 14 (1) of the Patents Rules 2007 in The Registered Designs Rules 2006 or The Trade Marks Rules 2008 but para 49 of the scheme offers to accept applications for registered designs and trade marks in Welsh and to make the relevant forms and guidance available in Welsh on the IPO's website.  As far as I can see, applicants or their agents would have to call the above number or send an email to request the relevant form or other document in Welsh.

It would appear from para 34 of the scheme that proceedings before IPO hearing officers can take place in Welsh.  The paragraph states that if the hearing takes place in Wales, it can be conducted in Welsh in the Newport Office where arranged in advance. If, however, no advance notice is given then due to limitations on the number of Welsh speaking staff and the lack of an in-house interpreter, there may be no legally and technically competent Welsh speaker immediately available. The applicant will then be given the choice, without prejudice, of continuing with the hearing in English or adjourning it until a Welsh speaker is available.

The rest of the document deals with such matters as signage, telephone calls, visits from members of the public, seminars and publications. I owe it to the IPO for my first lesson on soft mutations while driving around Newport searching for signs to Concept House when I noticed that "patent" had suddenly morphed into "batent".

I do not know whether any of the Appointed Persons speak Welsh but the Business and Property Courts in Wales ought to be able to hear appeals from Welsh speaking hearing officers in Welsh as well as infringement, invalidity, revocation and threats actions in all areas of IP law except patents, registered designs, chip topographies and plant varieties. The Court of Appeal and Supreme Court have been known to sit in Cardiff and there is at least one Welsh speaking Supreme Court justice.

My Welsh is not yet good enough to present a case in Welsh, but once it is ............ Anyone wishing to discuss this article may call me on +44 (0)7404 5252 during office hours or send me a message through my contact page.

"A Separate Welsh Legal Jurisdiction"

King Hywel the Good, the Codifier of Welsh Law

 

Jane Lambert

On 17 Feb 2021, I attended a webinar organized by Rights, Liberty and Justice (the Liberal Democrat Lawyers Associaton) on the topic of "A Separate Welsh Legal Jurisdiction".  The speaker was Mr Elfyn Llwyd who had been MP for Dwyfor Meirionnydd until 2015 and leader of Plaid Cymru in the House of Commons. He was chair of the Independence Commission which published Towards an Independent Wales in September 2020.

Almost the first recommendation of the report is a separate court system for Wales on the lines of the arrangements in Scotland and Northern Ireland:

"Wales must have a separate Welsh jurisdiction. Independence is not a prerequisite for this, but the general reservation to Westminster of powers relating to the single England and Wales jurisdiction needs to be removed. The recommendations of the Commission on Justice for Wales should be implemented by a Plaid Cymru Government."

The recommendation to which the Independence Commission refers is the report Justice in Wales for the People in Wales which was published in October 2019.

Before I discuss those reports I should declare an interest.  I am a barrister of the Bar of England and Wales specializing in intellectual property and technology law. I market my services to businesses throughout the United Kingdom and beyond including. in particular, startups and small and medium enterprises in Northwest Wales.  I, therefore, have an interest in ensuring that businesses in that region can access first-rate professional and financial services in any constitutional settlement.  Broader questions such as whether Wales should remain in a union with England, Scotland and Northern Ireland or secede from it are matters for Wales's residents and no one else.  As I do not live in Wales I shall abstain from that part of the debate.

The principal argument of both the Commission for Justice in Wales and the Independence Commission is that the Senedd (the Welsh devolved legislature) enacts primary legislation for Wales.  Gradually but surely the laws in Wales are diverging from the laws in England.  If they are to be enforced justly they must be construed by a judiciary that understands the context in which they were made and the legislative intent.  It may be possible for judges who live outside a jurisdiction to apply its local legislation as the Privy Council has done for centuries, but it is not convenient.  That is one of the reasons is why more and more Commonwealth countries have abolished the right of appeal to London.  As the divergence continues it is certainly in the interests of Wales and probably also in the interests of England for a separate system of courts to be established in Wales. Both unionists and nationalists can agree on that point.

Should that happen the courts of Wales will have to hear intellectual property cases.  Most of the intellectual property cases falling within para 16.1 of the Part 63 Practice Direction can be issued out of and proceed in Caernarfon, Cardiff and Mold pursuant to CPR 63.13 and para 16.2 of the Part 63 Practice Direction.  Those involving patents, registered designs, plant varieties and chip topographies must be issued out of the Patents Court or the Intellectual Property Enterprise Court ("IPEC") in London by reason of CPR 63.2.  Caernarfon and Mold do not have jurisdiction to hear trade mark cases because of para 16.3.  A software developer in Anglesey or Gwynedd that needs to restrain an infringement of copyright in its source code could seek an injunction in Caernarfon or Mold but a fashion designer from those regions would have to travel to Cardiff, Liverpool or London to obtain an injunction to restrain the infringement of her trade mark.  If the designer's registered design were infringed, she would have to go to London.

The journey across the Cambrian mountains is a delightful one as I discovered just before lockdown when my clerk booked me into a conference with a solicitor in Colwyn Bay and a hearing in the Trade Marks Registry the next day "on the basis that they are both in Wales and they don't look so far apart on the map."  The problem is that there is no motorway or dual carriageway between Gogledd and De with the consequence that a journey between the northern and southern coasts of the Welsh peninsula takes all day.  Train services are no better.   According to Trainiine, it takes 4 hours and 16 minutes to make that journey not to mention a 20-minute taxi ride to the Intellectual Property Office which is on the outskirts of the town. A rail journey from Bangor to Cardiff where the Business and Property Courts are located would take more than 5 hours.  By contrast, the trip to Liverpool takes 2 hours and London 3 hours 20.

I pointed that out to Mt Llwyd in the Q & A and he agreed with me.  Resources in Wales are lopsided with specialist courts, law firms and patent and trade mark agencies concentrated in Cardiff and Newport but not much else in the rest of the country.   At present, businesses in the North and Centre can travel conveniently to England for specialist services.  A trip to Cardiff would be far more time-consuming and expensive. The solution, I suggested, would be to upgrade Caernarfon into a Business and Property Court and establish new Business and Property Courts in Aberystwyth and the Southwest.

A commercial jurisdiction can be a stimulus to the economic development of a region as The Commission for Justice in Wales acknowledged at page 371 of their report.  Many years ago the government of the day had the bright idea of abolishing the chancery jurisdiction of the North of England.  Peter Keenan of Bridge Street Chambers in Manchester mobilized the legal and business communities in the North of England to oppose the idea.  Submissions were made to Sir Tom Legg to which I contributed the economic argument. I contended that a commercial jurisdiction in Manchester, Liverpool and Leeds would attract all sorts of professionals and not just lawyers to those cities. They could provide all sorts of financial, cultural and other services to businesses. Sir Tom listened and arranged for a High Court Judge to sit permanently in the North for at least half a term as an experiment.  The experiment was successful and similar arrangements were made for Birmingham, Bristol and Cardiff. In many ways, it was the foundation of the Northern Powerhouse and the Midlands Engine.

Exactly the same arguments can be made for the regions of Wales.   If that country is to develop in a balanced way with important business and cultural centres in each region a separate Welsh jurisdiction has to be accessible from every corner of the land.  Any legislation that the Senedd or the UK Parliament enacts must provide for properly resourced Business and Property Courts with full intellectual property jurisdiction in the North, Centre and Southwest of Wales as well as the Southeast.

Anyone wishing to discuss this article may call me on 020 7404 5252 or send me a message through my contact form.

IPEC Small Claims Track IP Litigation in Wales

Author Ham II Licence CC BY-SA 3.0 Source Wikipedia Cardiff Crown Court

Jane Lambert

Suppose you are a photographer in Pwllheli and someone from Conwy copies one of your photos of Yr Wyddfa and posts it on his website without your permission.  You ask him politely to take it down but he ignores your emails calculating that it would be more trouble than it is worth for you to sue him.

You are pretty incensed and consider your options.  You google "IP", "enforcement", "wales" and find my article Enforcing Intellectual Property Rights 16 April 2019.  You discover that you have two choices. You can issue proceedings against him out of the Caernarforn Justice Centre as it is one of the Chancery District Registries mentioned in para 16.2 of the Part 63 Practice Direction or you can bring a claim in the Small Claims Track of the Intellectual Property Enterprise Court ("IPEC").

If you issue out of Caernarfon costs are unlimited even in the County Court.  The judges who hear your case may not be IP specialists.  The trial could take place at a hearing centre miles away from Caernarfon.  In the Small Claims Track, you would get a specialist judge and your liability for costs is limited to a few hundred pounds.  But IPEC is in London.  It has only tried a case outside the capital once in its history.  You and your opponent both live in North Wales.

From October 2019 there will be an alternative, The government has announced plans in the new Intellectual Property Enterprise Court Guide to appoint district judges in Cardiff, Manchester and the other Business and Property Courts outside London to hear IP cases in the Small Claims Track (see The New IPEC Guide 4 July 2019). I have discussed how this will be done in Cardiff in Small Claims Track IP Litigation in Bristol and Cardiff on 10 July 2019 in NIPC Severn and in Manchester in Small Claims Track IP Litigation in Manchester also on 10 July 2019 in IP Northwest.  For parties in North Wales, Manchester may be more convenient than Cardiff. Also, there is nothing to stop the district judge from hearing the action in Caernarfon or some other local trial centre if a court can be made available for him or her.

The key thing to remember whether you are a solicitor, patent or trade mark attorney litigator or litigant in person is to file through the CE-File System and choose Cardiff or Manchester.  There is a useful video below from the Courts and Tribunal Service that shows how to do it:


Standard YouTube Licence

Anybody wanting to discuss this article or IP litigation generally can call me on 020 7404 5252 during office hours or send me a message through my contact form.