Comic Enterprises Ltd v Twentieth Century Fox Film Corp: PCC 22 Mar 2012

Birss QC HHJ explained his comments in ALK-Abello regarding the criteria for transerring a case to Chancery Division: ’21. This case is one in which access to justice for SMEs is raised squarely. It is the key element of Miss McFarland’s submissions that her client should stay in the PCC. Mr Malynicz submitted it was in effect just another factor to be weighed up like all the others. (I should note he does not accept the evidence on the point but I will deal with that below.) On the issue of principle, in my judgment Mr Malynicz is wrong. The Patents County Court has a specific role to improve access to justice for smaller and medium sized enterprises in the area of intellectual property. I described access to justice for small and medium sized enterprises as a ‘decisive factor’ in Alk-Abello (paragraph 55) and I stand by that observation.
However cases in which an SME seeks to sue a large defendant were always obviously going to present particular problems for a specialist court for small and medium sized enterprises in intellectual property matters. The fact that an IP right is held by a small claimant does not mean that the defendant will conveniently be a small enterprise as well. In the past small claimants were concerned that they could not afford to fight in the High Court and, more importantly, could not afford to lose. The costs order would bankrupt the company. The PCC’s cost capping system deals with this problem and caps the claimant’s downside costs risk at pounds 50,000. That is one of the ways in which the PCC facilitates access to justice.
Many smaller business people perceive that their intellectual property has been stolen by large corporations. Hitherto there was little they felt they could do about it. The PCC is by no means intended to be a panacea but it is intended to be a forum to facilitate access to justice for smaller IP rights holders and for that matter smaller organisations accused of infringing IP rights as well.
So what is the court to do when faced with a small claimant suing a large defendant? One thing is plain. As I have said already each case depends on its facts. A small claimant does not have an unfettered right to stay in the PCC regardless of the nature of the case any more than a large defendant has an unfettered right to demand that it be sued in the High Court.’
. . And ‘I remind myself that the ultimate objective of an order for transfer is to do justice between the parties. The argument that the case should remain in the Patents County Court is a powerful one. Access to justice for SMEs is capable of being a decisive factor having regard to the purposes for which the Patents County Court was set up. The claimant in this case would be severely affected by an adverse costs order in the High Court. However set against that is the nature of this case itself and its value.’


Birss QC HHJ


[2012] EWPCC 13




England and Wales


ExplainedAlk-Abello Ltd v Meridian Medical Technologies Dey Pharma Lp PCC 9-Nov-2010
The court was asked whether the case should be transferred from the Patents County Court to the High Court Patents Court.
Birss HHJ identified the relevant factors: ‘the points to consider are:-
i) the financial position of the parties . .

Cited by:

See AlsoComic Enterprises Ltd v Twentieth Century Fox Film Corp ChD 7-Feb-2014
Action for infringement of United Kingdom registered trade mark . .
See AlsoComic Enterprises Ltd v Twentieth Century Fox Film Corporation CA 8-Feb-2016
The proceedings concern a dispute about the right to use the word ‘glee’ as the name for a TV drama series. . .
See AlsoComic Enterprises Ltd v Twentieth Century Fox Film Corporation CA 25-May-2016
The court was asked as to the validity of certain trade marks. . .
Cited77 Ltd v Ordnance Survey Ltd and Others IPEC 15-Jun-2017
The court heard an application to transfer the case to the Chancery Division.
Held: Given the different levels of resources available to the parties, a transfer was refused. . .
CitedEnvironmental Recycling Technologies PatC 2012
Warren J discussed the importance of the financial health of the parties to a case when considering a transfer to the Chancery Division, and referring to Comic Enterprises said: ‘Ms. Lawrence submits that the financial position of the parties is . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 October 2022; Ref: scu.452262