New Circuit Court Rules for Intellectual Property Claims
The Circuit Court Rules have been amended to facilitate access to that court for certain intellectual property claims.
A new Order 5D has been inserted into the Circuit Court Rules.1 It sets out procedures to deal with certain intellectual property claims brought in that court. An “intellectual property claim” is defined in section 2 of the Copyright and Related Rights Act 2000 and includes certain specified proceedings under the 2000 Act as well as under the Patents Act 1992, the Trade Marks Act 1996 and the Industrial Designs Act 2001.
These new court rules follow on from the Copyright and Other Intellectual Property Law Provisions Act 2019. See our related briefing here. It made various amendments to legislation in this area to allow for the extension of the jurisdiction of the Circuit Court and the District Court to facilitate rightholders in bringing lower value intellectual property infringement claims within the monetary jurisdiction of those courts. The aim was to improve the possibilities for the enforcement of these claims, especially those that would not be economical to prosecute before the High Court.
The new rules specify that an intellectual property claim should be commenced by the issue and service of an ordinary civil bill which must contain certain additional particulars, which are specific to intellectual property proceedings. In summary, the pleadings must set out:
- the registered number of any registered intellectual property right concerned;
- full particulars of the ownership of any unregistered intellectual property right concerned, or of the plaintiff’s right to claim infringement;
- particulars of the nature and extent of any intellectual property right relied upon by the plaintiff (including the capacity in which the plaintiff sues if not the registered proprietor or proprietor of the intellectual property right concerned);
- particulars of the alleged infringement;
- the material facts relied on in support of the claim;
- the specific relief sought against each defendant, every provision or rule of law relied on in support of that relief and the grounds for the relief;
- the facts to show the jurisdiction of the court to deal with the matter.
The new rules also go on to deal with a variety of applications, such as a civil application for delivery up of, for example, infringing products under the Industrial Designs Act 2001 or infringing goods under the Trade Marks Act 1996. There are also provisions dealing with applications for erasure etc of an offending sign under that 1996 Act or for forfeiture or disposal of infringing goods or articles under various pieces of intellectual property legislation.
The new rules come into operation on 12 October 2021.
- The amendment is made by the Circuit Court Rules (Intellectual Property) 2021 (SI No 499 of 2021).
This document has been prepared by McCann FitzGerald LLP for general guidance only and should not be regarded as a substitute for professional advice. Such advice should always be taken before acting on any of the matters discussed.