Patents Court - Jurisdiction
Suh and another v Ryu and others: Patents County Court (Judge Birss QC): 3 May 2012
Regulation 3 of the County Court Remedies Regulations 1991 (the regulations), SI 1991/1222, so far as material, provides: ‘(1) Subject to the following provisions of this regulation, a county court shall not grant prescribed relief or vary or revoke an order made by the High Court granting such relief. (2) Reg graph (1) shall not apply to - ...(b) a patents county court held by a person nominated under section 291 of the Copyright, Designs and Patents Act 1988 to sit as a judge of that court.’
The claimants owned and ran a sushi restaurant. It built up substantial goodwill and reputation in the local area. In the summer of 2010, the landlord of the premises locked the claimants out and installed new tenants (the defendants) in the restaurant. The claimants commenced proceedings on the basis that the defendants were liable for passing off (since the claimants owned the goodwill), copyright infringement (since the claimants owned copyright in the menus) and conversion (since the claimants owned various goods the defendants used in the restaurant such as the crockery). The claimants sought search and seizure, and asset-freezing orders.
It fell to be determined whether the Patents County Court had jurisdiction to make search and seizure, and asset-freezing orders. McDonald v Graham  RPC 407 (McDonald), the Copyright, Designs and Patents Act 1988 (the 1988 act) and the County Court Remedies Regulations 1991, SI 1991/1222 were considered. The application would be allowed.
The correct interpretation of the regulations would be that a patents county court held by a person nominated under the 1988 act had jurisdiction to make orders for prescribed relief irrespective of the jurisdictional basis on which the case had come before the court (see  of the judgment). Obiter in McDonald provided that regulation 3(2)(b) of the regulations only permitted orders for prescribed relief in cases within the special jurisdiction of a patents county court and not in cases within the ordinary jurisdiction.
Thus, the orders would only be available in patents and design cases, and in aid of ancillary causes of action but would not be available for example in pure copyright or trademark cases. In the circumstances, the fact that it might be inconvenient did not mean that a dictum of the Court of Appeal in McDonald, albeit obiter, could be simply pushed to one side, all the more so when the judge doing so was sitting in a county court. The Court of Appeal's reasoning had really been based on the single point that, if regulation 3(2)(b) of the regulations had meant that a patents county court held by the nominated person had jurisdiction to make the relevant orders whether or not the claim was within the special jurisdiction, it could have been more clearly stated in different and simpler ways.
The fact that the reg graphs could have been drafted differently could not be decisive in the instant case. Of course, since the court had been clear that it did not need to decide the issue, there had been no reason why the analysis needed to be any fuller. Part of the context in which the regulations had been enacted was that ‘a patents county court held by a nominated person’ was recognised as being a court which could, in a proper case, grant Anton Piller and Mareva injunctions in cases before it generally, not just in cases in the special jurisdiction.
The intention of regulation 3(2)(b) of the regulations seemed to have been to preserve what had been an existing aspect of the jurisdiction of a patents county court. No distinction in relation to such relief had been drawn hitherto and so, if parliament had intended to draw one in the regulations, they would have done so. Further, a ‘patents county court’ was not a court which only had a special jurisdiction. It meant a court which had both a special and an ordinary jurisdiction. By the same token, the person nominated under section 291 of the act referred to in regulation 3(2)(b) of the regulations sat ‘as a judge of that court’, in other words, in the instant case, as a judge of the Central London County Court.
The special patents jurisdiction was not conferred on a person, it was conferred on a court. Finally, if the relief was available in a copyright case ancillary to a patent matter, there was no policy reason why the relief should be prohibited in a case on the same cause of action properly before the court on another occasion albeit no longer ancillary to a patent case (see , , , , , , , , ,  of the judgment).
Asset-freezing orders and search and seizure orders could be made in the Patents County Court by a nominated judge in all cases properly before the court. The prohibition on prescribed relief in regulation 3(1) of the regulations would not apply in the instant case (see ,  of the judgment). McDonald v Graham  RPC 407 explained.
Jonathan Moss (instructed by Courtyard Solicitors LLP) for the claimants. The defendants did not appear and were not represented.