Mother's recent application to move the legal case brought by smaller independent agency Other from the High Court to a lower court has been denied, after a judge decided there was a reasonable prospect of damages exceeding £500,000.
Other Creative, the owner of Other, lodged its initial complaint in March of this year against Mother Family, the parent company of Mother London, over the latter's decision to name its spin-off agency "Other" when it launched in November 2020.
Mother Family submitted its response in April, and Other Creative responded to this in June.
In the latest development, Mother Family's application to move the case to a lower court has been dismissed, after the judge concluded in a ruling at the end of November that Other Creative has a reasonable prospect of claiming damages of more than £500,000.
The case continues and no judgment has been made about the substance of Other Creative's claim.
A trial is set to take place in the High Court between October and December 2022, the judge's ruling said.
Shifting proceedings to the Intellectual Property Enterprise Court (IPEC) – the court that Mother Family applied for – would have capped damages at £500,000.
Such a move would also restrict the costs and legal fees recoverable by the successful party to a total of about £50,000. According to court documents seen by ±±¾©Èü³µpk10, both parties have budgeted that their costs would exceed that figure.
The IPEC is designed to provide a less costly and less complex alternative to intellectual property litigation in the Chancery Division of the High Court, where the case currently sits. It is used for small and medium-sized organisations, or larger enterprises with smaller matters.
In her ruling on 26 November Julia Clark QC, a master of the High Court, found that not only can both parties afford to litigate in the High Court, the defendant [Mother] is the "financially stronger party".
She also said that Mother Family's approach to its defence of the claim – including not making any concessions to Other Creative, contesting all elements of the claim and budgeting £50,150 for disclosure time – suggested the claim would require a three- to four-day hearing and thus needed to be heard in the High Court.
The court ordered Mother Family to pay Other Creative's costs relating to its transfer application, which were assessed to be £35,000, by 4.30pm on 10 December.
Mother changed the name of its offshoot agency from Other to TheOr in early November, ahead of the hearing.
According to the recent legal documents, Mother has undertaken to no longer use "Other" in the course of trade, to remove the word "Other" from any mediums under its control, such as social media channels, and not to register a company or trading name that incorporates the word "Other".
An undertaking is a legally binding promise given to a court on a voluntary basis, instead of the court making an order. If the party that made the promise fails to comply, they will face penalties.
Jon Dobinson, chief executive of Other, said: "This judgment is very good news and is in effect a win for us on all points. We are obviously glad that Mother gave the Court an undertaking to stop using our name.
"Mother wanted to transfer this case to a court which would have restricted our ability to get back the legal costs we have incurred defending our name but they lost, and the case will stay in the High Court. Our legal fees are already well in excess of the cap that Mother's proposed transfer to IPEC would have imposed.
"It's a great shame that it has taken 12 months of battling to get them to stop using our name: that's not the way we had planned to spend our 25th year in business. This is only the first hearing in the case and it could be another year or more before there's a final determination of the damages and costs, so we won't be opening any Champagne, but we'll certainly sleep better tonight."
A spokesperson for the Mother Family said: "Mother does not comment on ongoing legal proceedings."
Other Creative has been trading since 1996 but had not trademarked the name "Other" at the time of Mother launching its new agency. Mother was also founded in 1996.
Other Creative is being represented by law firm Venner Shipley, while Mother is represented by Lewis Silkin.
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