The cost of litigating in the streamlined Patent County Court can be vastly lower than in the High Court. Yet, regardless of forum, costs are always wasted when parties pursue weak cases, and in the PCC the cap on recoverable costs makes this problem more acute. The judge may award off-scale costs where parties have behaved unreasonably, but merely pursuing a weak case is not necessarily unreasonable. Nevertheless, in a court whose primary objective is to ensure access to justice for SMEs, persuading parties to approach cases realistically early on carries a special importance.
In this regard, the innovative "early stage, non-binding view" approach taken recently in Weight Watchers (UK) Ltd. & Ors v Love Bites Ltd. & Ors. ( EWPCC 11) may offer the necessary reality-check for parties in cases where one side is clearly likely, or clearly unlikely, to prevail.
So Tired of Weighting
In this case, the claimant, Weight Watchers, sued in the PCC for trademark infringement based on a likelihood of confusion as well as detriment and unfair advantage.
The claimant was the proprietor of registered trademark rights in WEIGHT WATCHERS for various foods. The defendant had begun selling sandwiches under the mark WAIST WATCHERS in 2006. The claimant objected but nothing came of it, and the defendant carried on trading and secured a registered UK trademark for WAIST WATCHERS. The application was filed after the UK-IPO ceased relative rights examination, and the application was therefore allowed notwithstanding the claimant's earlier rights in WEIGHT WATCHERS.
In 2010, after three years of trading, the defendant notified the claimant that it was considering expanding its range of products and licensing its WAIST WATCHERS mark to third parties. It expressed, however, a willingness to explore a possible sale of its rights to the claimant.
Goaded into action at last, Weight Watchers launched trademark infringement proceedings in the PCC.
Don't Waist My Time (or Money)
Normally the merits of a case are not explored at the case management conference stage, where the judge typically issues directions for the handling of the case up to trial and deals with requests for specific disclosure, cross-examination and the like.
In this case, though, the judge considered the case to be sufficiently straightforward that it should be possible to give a fairly reliable, early stage, albeit non-binding view on the merits, and the parties accepted his offer to do so.
In giving his view, the judge appeared to regard this as a fairly textbook case of trademark infringement. The marks were clearly similar, the goods were identical or similar, and there was, in the judge's view, a likelihood of confusion.
The judge moreover accepted that WEIGHT WATCHERS was a mark with a reputation and considered that WAIST WATCHERS was likely to bring WEIGHT WATCHERS to mind for the ordinary consumer, and that the link thus formed would "very likely" be detrimental to, or take unfair advantage of, the distinctiveness or repute of the claimant's mark.
There were some issues on which the judge did not consider it possible to pronounce at an early stage and without the benefit of disclosure or cross-examination. The question of possible tarnishment of the claimant's brand image and whether the defendant had deliberately set out to adopt a mark that would bring the claimant's mark to mind were among these. However, the judge considered that the overall similarity of the marks and the fact that the defendant's mark was likely to bring the claimant's to mind were sufficient to point to loss of control of reputation for the claimant, which tended to support the claimant's case on detriment.
Consequently, there was enough material before the judge for him to give a preliminary view that the claimant appeared to have a strong case for infringement and that the defendant's trademark registration for WAIST WATCHERS was probably invalid.
The idea that a judge in the PCC might give a non-binding, early stage view on the merits has been mooted for some time, but this case marks the practice's debut.
Automatic so-called "preliminary views" were, as many will know, the practice of the UK-IPO for a number of years as well, but it was problematic since the views were based purely on statements of case without the benefit of evidence, and they rarely if ever persuaded parties to settle or abandon a case. The practice was steadily scaled back until it was only offered where parties proactively sought it, and even then, only where both parties agreed.
In contrast to UK-IPO proceedings, however, cases in the PCC are front-loaded so that most of the evidence, apart from elements that rely on an order for specific disclosure, is filed at the outset. Consequently, the judge is more likely to have an idea in straightforward cases of who is likely to prevail at trial. Hence, parties are more likely to take the judge's early stage views on the merits seriously, and such views are accordingly more likely to focus the minds of the parties on the question of whether, and how, to continue a case in view of the associated costs.
The potential cost benefits of getting an early read on how a judge sees a case are clear. If, having most of the evidence before him, the judge is already sceptical of the merits and there are no unconsidered issues that are likely to tip the balance, there is a strong incentive on the party with the weaker case to seek a settlement.
Of course, if the parties are already negotiating, the expression of a view by the judge may unbalance the discussions and parties who are talking settlement may prefer to keep the judge out of it until trial, if the matter progresses that far. The judge in this case was therefore careful to emphasise that his view was given only after consultation with, and consent by, both parties.
Unsurprisingly, this case settled shortly after the preliminary view was given. That might not happen in all cases, though, and it is interesting to consider whether pursuing a case that a judge says is unlikely to succeed would constitute unreasonable conduct, such as to justify a costs penalty in the form of off-scale costs if the claim, or defence, fails. Probably the question is one of degree; merely pursuing a weak case may not be unreasonable, but pursuing one that is clearly hopeless to the extent of bordering on abuse of process well might be. Such cases are in any event liable to be struck out on application before trial.
Overall, an early stage, non-binding view on the merits is clearly not appropriate for all cases, but the reality check it offers may be helpful in some. Its availability is a further tool in the shed for the PCC in ensuring proportionality of costs in IP litigation.