World IP Day: benefits of enforcing IP rights in Scotland

United Kingdom

This week we celebrated World IP Day. To mark the occasion and reiterate the importance of intellectual property, we want to raise awareness of the benefits of enforcing IP rights in Scotland.

The vast majority of IP litigation in Scotland takes place in the IP Court, which sits within the Court of Session (Scotland’s highest civil court) in Edinburgh. The Scottish IP Court offers a rights-holder friendly forum which allows for the quick, cost-effective resolution of IP disputes. There are several benefits of conducting IP litigation in Scotland including certain procedural differences to other jurisdictions which can save both time and money.

These benefits include:

  • No mandatory pre-action correspondence - unlike some other jurisdictions, the Scottish IP Court does not require parties to set out their case in writing in advance of court proceedings being raised. Whilst parties are free to issue pre-action correspondence if they wish, there are no mandatory provisions requiring them to do so.

  • Interim interdicts (preliminary injunctions) granted on a without notice basis - it is possible to have an interim interdict awarded on a “without notice” basis. The exception to this, is that the IP Court allows any company or individual to file a “caveat” which provides advance notice of anybody seeking to take out certain interim orders against them. However, interim interdicts are regularly granted with no advance notice and the first the infringer becomes aware of it is when the order is served on them.

  • No discovery nor initial disclosure process - there is no discovery nor initial disclosure process. This can be surprising to non-Scots lawyers. Whilst one cannot mislead the Court, there is no obligation, per se, on either party to disclose information which may be unhelpful to their case. There is instead a document recovery process whereby either party can ask the court for an order requiring the other side to disclose certain categories of documents. The lack of discovery means that the Scottish equivalent of “search and seizure” orders, known as “dawn raid” orders, are more likely to be granted. Such orders authorise the rights holder’s solicitors to enter the premises of the infringing party to search for, copy, remove and detain specified products and documents.

  • Court ordered publicity orders - the use of court ordered publicity orders which advertise IP judgments are regularly granted by the IP Court in Scotland. Such orders can permit the rights holder to advertise the judgment in national, local and trade press. These can be very powerful and have the extra benefit that they are paid for by the infringing party. Whilst such orders may be awarded in other jurisdictions, the Scottish IP Court has demonstrated a willingness to grant such orders on a regular basis.

  • Timing - the lack of mandatory pre-action correspondence; the ability to secure without notice interim orders; and the lack of discovery mean that, in general, court actions can be raised relatively quickly in Scotland. A reasonably straightforward trade mark dispute could be dealt with in the IP Court within around 12 months of an action being raised.

  • Costs - There is no costs budgeting in the Scottish IP Court, as such, costs do not need to be agreed in advance of significant proceedings being raised. Additionally, no matter the value of the case or the type of IP involved, the IP Court only charge just over £300 to have a court summons authorised for service. This can offer a substantial cost saving in comparison to court costs in other jurisdictions.

Scotland in Focus

The benefits of litigating in the Scottish IP Court were further highlighted in a recent case[1]. The Pursuer in this case produces Hendrick’s Gin and owns various trade marks including the shape of the bottle and packaging. Lidl’s own brand Hampstead Gin was accused of infringing the Pursuer’s IP and a passing off claim was brought against Lidl and the Pursuer sought an interim interdict. On appeal, the Court awarded the Pursuer a UK wide interim interdict on the basis that the Defender was domiciled in both Scotland and England, as they had shops UK wide.

In almost all cases of IP infringement, Scottish jurisdiction can be obtained by carrying out a test purchase from Scotland. Following the Hendrick’s case, brands can take comfort that they have the potential to obtain UK-wide protection whilst taking advantage of some of the benefits outlined above, of bringing the claim in Scotland.

For more information on enforcing your IP rights in Scotland, please do get in touch.

Article co-authored by Clare O'Toole, Trainee Solicitor at CMS. 


[1] William Grant & Sons Irish Brands Ltd. v Lidl Stiftung & Co. & Ors [2021] CSIH 38