Checklist of Issues on Enforcement under TRIPS Art. 63.2 - View details of the document

Antigua and Barbuda

(a) Civil judicial procedures and remedies

The Supreme Court of Judicature (comprised of the High Court of Justice and the Courts of Appeal) with a final appeal to the Judicial Committee of the Privy Council.

Which persons have standing to assert IPRs? The proprietor of the intellectual property right or a licensee may assert his right in the intellectual property right through civil proceedings. In the case of trademarks, patents, industrial designs and layout-designs of integrated circuits, the registered proprietor of the right or the registered licensee may assert that right. In the case of copyright and neighbouring rights, and protection of secret information, the proprietor of the intellectual property right may assert the right. There is no system of registration of the latter category of intellectual property rights. In relation to enforcement of copyright and neighbouring rights, proceedings may be brought by anyone claiming to be the owner either as a result of creation, of subsequent operation of the law, or by virtue of assignment or other transmission of the right(s). Such enforcement proceedings can also be brought (except against the owner) by an exclusive licensee. In the case of trademarks, patents, industrial designs and integrated circuits, and plant breeders’ rights, the proprietor of the intellectual property right must be recorded on the Register. In the case of geographical indications, any interested person and any interested group of producers or consumers may institute proceedings in the court to prevent any unlawful act. Unregistered trademarks are enforced by a passing off action under Common Law in which the plaintiff must show that the defendant has misappropriated some part of the plaintiff’s goodwill. How may they be represented? Before the Supreme Court, a natural person may appear in person, but an attorney-at-law entitled to practise in Antigua and Barbuda must represent corporate entities. Are there any requirements for mandatory personal appearances before a court by the right holder? There are no such requirements.

The Courts have the authority to order the production of documents in court by virtue of the Rules of Court. In Antigua and Barbuda, a party to litigation has an obligation (either automatically or upon order of the court) to give discovery of such documents which it may have in its custody, possession, or power which relate to the issues in the litigation proceedings. This involves first producing a list of such documents and then the opposing party has the power to inspect and take copies of those documents, save where legal or professional privilege is properly claimed, for example, in relation to communications relating to legal advice or the preparation of witness statements. Any breach of this discovery obligation leaves the defaulting party at risk of having his statement of claim or defence struck out. There is also the power of the courts to make orders at the start of proceedings for the protection of evidence in those proceedings if there is a legitimate fear of such evidence being destroyed. See the answer to question 10 below, on Anton Piller Orders.

[Answer 10: Under the Common Law system the court has the following powers: The High Court has power to adjudicate upon enforcement of intellectual property rights and can take provisional measures before full trial on the merits of a case, including the grant of interim or preliminary injunctions called interlocutory injunctions. The Court may also grant relief of the type known as an Anton Piller Order after the case in which this relief was first made. Under this order, the defendant is required to admit to its premises, as named in the order, persons named in the order and supervised by an independent attorney to search for and take into custody any document and things of the type specified in the order in order to preserve such as evidence for a trial. The defendant is also usually enjoined from activity likely to be an infringement of the stated intellectual property right and is required to make an affidavit disclosing the source of the articles which have already left the premises. The courts can also grant what is called a Mareva injunction, again after the case in which it was first made. This is an order for the blocking of bank account, and other assets of the defendant pending review of these by the court. As with the Mareva injunction, this writ will normally only be used when it is feared that a defendant will leave the jurisdiction of the court before damages awarded by the court have been paid. Yet a further provisional measure, is an application to the court for an interim award of damages. To obtain this, the plaintiff must show to the court that it is likely that at full trial the court will award substantial damages and that, pending the assessment of these at trial, it is just that there should be an interim payment. The Court may make it a condition of such payment that the defendant will take steps to preserve the sum for reparation (with interest) should the court at trial award the plaintiff no damages, or a lesser sum than the interim payment.]

There are no statutory directives given to the court regarding confidentiality and it is entirely in the court’s discretion as to how they will deal with confidential information brought forward as evidence. The onus lies on the party claiming confidentiality of information to apply to the court for directions as to confidentiality. If in the exercise of its discretion, the court determined that the confidentiality of that information needed protecting, it would order terms and conditions for its protection. It must be noted that section 34(5) of the Patent Bill states that the Court must take into account the legitimate interests of the alleged infringer in not disclosing his manufacturing and business secrets. The courts in Antigua and Barbuda normally hold the substantive trial of litigation in a court open to members of the public (including journalists). However, some of the preliminary proceedings may be held “in chambers”, that is in a court closed to the public. The court also has the power to sit in camera that is in closed session, where it is satisfied that it is necessary to do so to protect legitimate secret information.

Injunctions Under their general jurisdiction and under the provisions of the various intellectual property laws, the courts may grant relief for infringement in the form of an interim or permanent injunction and, at the option of the plaintiff, either damages or an account of profits. Under their general jurisdiction the courts have the power to order an unsuccessful party to pay the costs of the successful party. The courts apply the rule that they may grant an interim injunction if the court is satisfied that there is a serious issue to be tried, if the risk of damage to the plaintiff if the injunction is not granted will not be compensated by an order for damages, provided that the plaintiff gives an undertaking to compensate the defendant if the injunction is later found by the court to be unjustified. A permanent injunction may be granted where the plaintiff establishes infringement. Damages, including recovery of profits, and expenses, including attorney's fees Under their general jurisdiction and under the provisions of the various intellectual property laws, the courts have wide powers to award damages for infringement, or if the plaintiff can be awarded damages in the case of innocent infringement but the quantum of damages will take into account the fact that the infringement was innocent. Damages usually include the recovery of commercial losses associated with the infringement and an award of damages would normally be accompanied by an order for payment of legal costs incurred by the successful party in the case. As to the expenses and attorney’s fees, it is the practice in Antigua and Barbuda to order that costs be taxed if not otherwise agreed. Under such order the successful party will normally recover a sum corresponding to the reasonable sums which were reasonably expended in the litigation (including court costs and attorney’s fees). If these cannot be agreed between the parties, the Registrar assesses such costs. However, as a party will normally spend more money on a case than the Registrar will consider reasonable, and as the Registrar will disallow all claimed costs for which there is not sufficient evidence of how the costs have been incurred and of receipts for expenditure, a successful party will, in actuality, probably recover only two-thirds of its actual costs. Where the court considers that litigation (or a single issue in it) was brought unreasonably, it can make an order for the costs thereof to be assessed on an “indemnity basis”. Under this basis the party’s costs are assessed as its total costs other than those which were unreasonably incurred. Destruction or other disposal of infringing goods and materials/implements for their production The Courts have an inherent jurisdiction to order defendants to deliver up infringing goods and copies as well as materials/implements for their production. Provisions of the Copyright Bill allows for the seizure of infringing goods or copies, and the equipment used for making them, and delivery of the goods, copies or equipment to the right owner, the exclusive licensee or the performer, or their destruction. Under the Copyright Act, if the court directs that copies be forfeited to the State, the copies must be disposed of as prescribed by regulations. For patent infringement, a court has statutory power to make an order for the infringer “to deliver up or destroy any patented product in relation to which the patent has been infringed or any article in which that product is inextricably comprised”. For infringement of a registered trademark, the court may order the offending sign to be erased, removed or obliterated from infringing goods, material or articles in the possession, custody or control of the infringer; or for such goods, materials or articles to be delivered up to the trademark proprietor, and the courts can then order their destruction. This is not spelt out in the Bill, but the court does have the power to order any such relief it deems necessary. For infringement of copyright or neighbouring rights, the court may (as a part of its inherent powers) similarly order delivery up of infringing works in the custody of the defendant. In addition, orders for delivery up and subsequent destruction of infringing goods are also available as part of the criminal procedure for copyright infringement (see the answer to question 24 below). The court likewise has inherent powers to make order for delivery up, or destruction, of articles coming into existence for the purposes of passing off or as a result of knowingly acting in breach of confidence. Any other remedies As an alternative to an award of damages, the owner of copyright or neighbouring rights, a patent or a new plant variety, upon a find of infringement of his rights, may elect to seek, instead of damages, an account of profits. This requires the court to assess the profits, which the infringer has made as a result of his infringing acts, and to pay these over to the right holder.

[Answer 24: Copyright Under section 46 of the Copyright Bill, the penalty for infringement for profit-making purposes by a person knowing or having reason to believe that he is committing an infringement, in summary conviction is a fine between $5000.00 EC and $10,000.00 EC and to two or three years imprisonment, depending on the type of infringement. Where there has been no decision on such remedies in civil proceedings, the magistrate has the authority to order the impounding of suspected copies of works on sound recordings, as well as the packaging of the implements that could be used for the making of, and the documents, accounts or business papers referring to such copies; to order the forfeiture and seizure of all copies of works or sound recordings manufactured, reproduced, distributed, sold or otherwise used, intended for use or possessed with intent to use in contravention of the rights of the owner and all plates, moulds, masters, tapes, film negatives or other articles by means of which such copies of works or sound recordings may be reproduced and all electronic, mechanical or other devices for manufacturing, reproducing or assembling such copies of works or sound recordings; to order the destruction or other reasonable disposition of infringing copies and their packaging outside the channels of commerce; where there is danger that implements may be used to commit or continue to commit acts of infringements, to order their destruction or reasonable disposition outside the channels of commerce. Where an offence under section 46 committed by a body corporate is proved to have been committed with the consent or connivance or attributable to neglect on the part of any director, manager, secretary or person purporting to act in any such capacity, he as well as the body corporate is guilty and liable to the above penalties. Trademarks Under section 23 of the Trade Marks Bill, it is an offence for a person to apply to goods or their packaging a mark identical to, or likely to be mistaken for, a registered trademark, sell or let for hire, offer or expose for sale or hire or distribute goods which bear or the packaging of which bears such a mark, has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything by himself or another which would be an offence as mentioned above. The penalty on summary conviction is a fine of $100,000 and imprisonment for five (5) years. Patents Under section 34 of the Patent Bill, it is an offence for a person to knowingly and wilfully make, import, offer for sale, sell, use the product, or the stocking of the product for sale or use, or the use of the process patented without the consent of owner or the licensee of. The penalty on summary conviction is a fine of $100,000 and imprisonment for three (3) years. Industrial designs Section 21 provides that any person who knowingly makes, sells, or imports articles incorporating the industrial design without the consent of the right holder commits an offence. The penalty on summary conviction is a fine of $50,000 and imprisonment for three (3) years. Integrated circuits and topography bill Under section 15 it is an offence to perform any of the acts listed in section 6 without the authorisation of the right holder. These acts include the reproduction of the protected layout-design in its entirety or any part thereof, importing, selling, or otherwise distributing for commercial purposes the protected design or integrated circuit incorporating the layout- design. The penalty on summary conviction is a fine of $10,000.00 and imprisonment for five (5) years, and the court may also order the seizure, forfeiture and destruction of the layout-designs, integrated circuits or articles concerned and of any materials or implements, the predominant use of which has been in the commission of the offence. Geographical indications Section 7 provides that any person who knowingly and with intent to deceive, performs any act of the acts referred to in section 3, such as the means in the designation or presentation of a good in question originates in a geographical area other than the true place of origin, commits an offence. Any use constituting an unfair competition within the meaning of Article 10bis of the Paris Convention, and the use of a geographical indication identifying wines or spirits not originating in the place indicated, are also offences. The penalty on summary conviction is a fine of $50,000 and imprisonment for three (3) years.]

It is within the inherent powers of the courts of Antigua and Barbuda to make such orders, even (in an appropriate case) prior to a finding of infringement. The courts will routinely order an infringer to provide information which identifies those who have supplied to him infringing articles, and also those who have supplied particular means by which these have been made, provided in this latter case that such means were supplied with knowledge, or a reasonable belief, that such would be used in infringing acts.

Describe provisions relating to the indemnification of defendants wrongfully enjoined An interim injunction will only be ordered by a court on the basis of the plaintiff giving to the court an undertaking that will only order an interim injunction, if the defendant is subsequently found to have been wrongfully enjoined, the plaintiff will pay damages therefore to the defendant. The court can require security for such an undertaking to be given, by way of a deposit of money in the Court’s funds or by providing a guarantee from a bank or other reliable source of funds, and will normally do so in the case of a plaintiff resident outside the jurisdiction. To what extent are public authorities and/or officials liable in such a situation and what “remedial measures” are applicable to them? The judges in the courts of Antigua and Barbuda are under the common law immune from litigation in the even that their decisions may subsequently be overturned, either by an Appellate Court, or by a court in another case reaching a different conclusion. The Registrar is generally immune from liability resulting from the performance of her statutory duties.

Describe provisions governing the length and cost of proceedings There are no such provisions in the laws of Antigua and Barbuda. The Rules of Court stipulate periods for dealing with various pre-trial matters, which periods can usually be extended by agreement between the parties, without application to the court. However, at any stage, a party may apply to the court for a specific order that the litigation against the defaulting party be dismissed or for an order requiring the opposing party to take some step within a defined period, failing which the litigation should automatically be determined against that party. Before the substantive trial takes place, there will be many and varied pre-trial procedures which the parties may be required or choose to employ. There is first a formal exchange of pleadings, which sets out the allegations made against a party and the defences that the opposing party proposes to raise against these. These pleadings do not set out to enumerate the detailed facts which will have to be established if the time make admissions which reduces the issues in contention and there determination of those live issues, for which see the answer to question 3 above. When these pre-trial procedures are judged to be complete, the case may be set down for trial. Provide any available data on the actual duration of proceedings and their cost There is no useful data available since the duration and cost of proceedings for enforcement of intellectual property rights depend on the complexity of the particular case and whether (and if so at what stage) settlement is reached before the trial of the substantive issues.

[Answer 3: The Courts have the authority to order the production of documents in court by virtue of the Rules of Court. In Antigua and Barbuda, a party to litigation has an obligation (either automatically or upon order of the court) to give discovery of such documents which it may have in its custody, possession, or power which relate to the issues in the litigation proceedings. This involves first producing a list of such documents and then the opposing party has the power to inspect and take copies of those documents, save where legal or professional privilege is properly claimed, for example, in relation to communications relating to legal advice or the preparation of witness statements. Any breach of this discovery obligation leaves the defaulting party at risk of having his statement of claim or defence struck out. There is also the power of the courts to make orders at the start of proceedings for the protection of evidence in those proceedings if there is a legitimate fear of such evidence being destroyed. See the answer to question 10 below, on Anton Piller Orders.]

(b) Administrative procedures and remedies

Antigua and Barbuda’s intellectual property right legislation does not have provisions for administrative procedures that deal with infringement. Administrative determinations are related to registration rather that infringement.

(a) Judicial measures

Under the Common Law system the court has the following powers: The High Court has power to adjudicate upon enforcement of intellectual property rights and can take provisional measures before full trial on the merits of a case, including the grant of interim or preliminary injunctions called interlocutory injunctions. The Court may also grant relief of the type known as an Anton Piller Order after the case in which this relief was first made. Under this order, the defendant is required to admit to its premises, as named in the order, persons named in the order and supervised by an independent attorney to search for and take into custody any document and things of the type specified in the order in order to preserve such as evidence for a trial. The defendant is also usually enjoined from activity likely to be an infringement of the stated intellectual property right and is required to make an affidavit disclosing the source of the articles which have already left the premises. The courts can also grant what is called a Mareva injunction, again after the case in which it was first made. This is an order for the blocking of bank account, and other assets of the defendant pending review of these by the court. As with the Mareva injunction, this writ will normally only be used when it is feared that a defendant will leave the jurisdiction of the court before damages awarded by the court have been paid. Yet a further provisional measure, is an application to the court for an interim award of damages. To obtain this, the plaintiff must show to the court that it is likely that at full trial the court will award substantial damages and that, pending the assessment of these at trial, it is just that there should be an interim payment. The Court may make it a condition of such payment that the defendant will take steps to preserve the sum for reparation (with interest) should the court at trial award the plaintiff no damages, or a lesser sum than the interim payment.

In cases of exceptional urgency, the High Court will order an injunction on an ex parte basis, that is inaudita altera parte. However, this will only be done when the court is of the opinion that an immediate injunction is necessary because otherwise the plaintiff is likely to suffer extreme and irremediable harm. Applications for interim injunctions without notice or ex parte injunctions are granted to the applicant for a matter of days only, the applicant must then return to the court at a time when the defendant can also be present and then seek a renewal of the injunction on the grounds set out in the answer to question 10 above. Some of the other types of provisional relief such as Anton Piller and Mareva Orders normally made on an ex parte basis in order to surprise the defendant and thereby prevent it from taking steps to evade the relief ultimately to be awarded by the court.

[Answer 10: Under the Common Law system the court has the following powers: The High Court has power to adjudicate upon enforcement of intellectual property rights and can take provisional measures before full trial on the merits of a case, including the grant of interim or preliminary injunctions called interlocutory injunctions. The Court may also grant relief of the type known as an Anton Piller Order after the case in which this relief was first made. Under this order, the defendant is required to admit to its premises, as named in the order, persons named in the order and supervised by an independent attorney to search for and take into custody any document and things of the type specified in the order in order to preserve such as evidence for a trial. The defendant is also usually enjoined from activity likely to be an infringement of the stated intellectual property right and is required to make an affidavit disclosing the source of the articles which have already left the premises. The courts can also grant what is called a Mareva injunction, again after the case in which it was first made. This is an order for the blocking of bank account, and other assets of the defendant pending review of these by the court. As with the Mareva injunction, this writ will normally only be used when it is feared that a defendant will leave the jurisdiction of the court before damages awarded by the court have been paid. Yet a further provisional measure, is an application to the court for an interim award of damages. To obtain this, the plaintiff must show to the court that it is likely that at full trial the court will award substantial damages and that, pending the assessment of these at trial, it is just that there should be an interim payment. The Court may make it a condition of such payment that the defendant will take steps to preserve the sum for reparation (with interest) should the court at trial award the plaintiff no damages, or a lesser sum than the interim payment.]

Usually the plaintiff is required to institute the action by filing a claim form before applying for provisional measure. In cases of extreme urgency, an interim injunction may be granted on an application without notice by the right holder. When an order is made in this circumstance, the applicant must within seven (7) days before a date is fixed for further consideration of the application, serve the respondent personally with the application for the interim order, the evidence on an affidavit in support of the application, any interim order made without notice, and notice of the date and time on which the court will further consider the application. Strict guidelines will be given by the judge granting interim injunction without notice for the return hearing when the respondent will be afforded an opportunity to be heard. On the return hearing the general principles governing interim injunctions will be applied and also key measures in affording protection to the respondent against damages that he may incur in the event that the provisional measure is proved to be unjustified. These could include undertakings by the applicant supported by bond to secure the payment of damages or less commonly be a payment of money into Court.

Describe provisions governing the length and cost of proceedings Under the laws of Antigua and Barbuda there are no provisions that govern the length or costs of proceedings for provisional measures. Provided that a request for provisional measures is made promptly, the court will then stipulate a timetable for further procedure and a hearing date will be fixed. As provisional relief is usually requested because of the threat of imminent damage to the interests of the applicant, the court will expedite the timetable in an appropriate way according to the perceived need for immediate relief. The appeal court will likewise act with great expedition when it perceived that is necessary in the public interest. The normal rules with respect to costs explained in the answer to question 5 above also apply to applications for provisional measures. However, the usual order for costs awarded in respect of applications for provisional relief is that these only take effect at the end of the substantive trial, though the court can make an order for “costs to be taxed and paid forthwith”. Provide any available data on the actual duration of proceedings and their cost Refer to the previous answer.

[Answer 5: Injunctions Under their general jurisdiction and under the provisions of the various intellectual property laws, the courts may grant relief for infringement in the form of an interim or permanent injunction and, at the option of the plaintiff, either damages or an account of profits. Under their general jurisdiction the courts have the power to order an unsuccessful party to pay the costs of the successful party. The courts apply the rule that they may grant an interim injunction if the court is satisfied that there is a serious issue to be tried, if the risk of damage to the plaintiff if the injunction is not granted will not be compensated by an order for damages, provided that the plaintiff gives an undertaking to compensate the defendant if the injunction is later found by the court to be unjustified. A permanent injunction may be granted where the plaintiff establishes infringement. Damages, including recovery of profits, and expenses, including attorney's fees Under their general jurisdiction and under the provisions of the various intellectual property laws, the courts have wide powers to award damages for infringement, or if the plaintiff can be awarded damages in the case of innocent infringement but the quantum of damages will take into account the fact that the infringement was innocent. Damages usually include the recovery of commercial losses associated with the infringement and an award of damages would normally be accompanied by an order for payment of legal costs incurred by the successful party in the case. As to the expenses and attorney’s fees, it is the practice in Antigua and Barbuda to order that costs be taxed if not otherwise agreed. Under such order the successful party will normally recover a sum corresponding to the reasonable sums which were reasonably expended in the litigation (including court costs and attorney’s fees). If these cannot be agreed between the parties, the Registrar assesses such costs. However, as a party will normally spend more money on a case than the Registrar will consider reasonable, and as the Registrar will disallow all claimed costs for which there is not sufficient evidence of how the costs have been incurred and of receipts for expenditure, a successful party will, in actuality, probably recover only two-thirds of its actual costs. Where the court considers that litigation (or a single issue in it) was brought unreasonably, it can make an order for the costs thereof to be assessed on an “indemnity basis”. Under this basis the party’s costs are assessed as its total costs other than those which were unreasonably incurred. Destruction or other disposal of infringing goods and materials/implements for their production The Courts have an inherent jurisdiction to order defendants to deliver up infringing goods and copies as well as materials/implements for their production. Provisions of the Copyright Bill allows for the seizure of infringing goods or copies, and the equipment used for making them, and delivery of the goods, copies or equipment to the right owner, the exclusive licensee or the performer, or their destruction. Under the Copyright Act, if the court directs that copies be forfeited to the State, the copies must be disposed of as prescribed by regulations. For patent infringement, a court has statutory power to make an order for the infringer “to deliver up or destroy any patented product in relation to which the patent has been infringed or any article in which that product is inextricably comprised”. For infringement of a registered trademark, the court may order the offending sign to be erased, removed or obliterated from infringing goods, material or articles in the possession, custody or control of the infringer; or for such goods, materials or articles to be delivered up to the trademark proprietor, and the courts can then order their destruction. This is not spelt out in the Bill, but the court does have the power to order any such relief it deems necessary. For infringement of copyright or neighbouring rights, the court may (as a part of its inherent powers) similarly order delivery up of infringing works in the custody of the defendant. In addition, orders for delivery up and subsequent destruction of infringing goods are also available as part of the criminal procedure for copyright infringement (see the answer to question 24 below). The court likewise has inherent powers to make order for delivery up, or destruction, of articles coming into existence for the purposes of passing off or as a result of knowingly acting in breach of confidence. Any other remedies As an alternative to an award of damages, the owner of copyright or neighbouring rights, a patent or a new plant variety, upon a find of infringement of his rights, may elect to seek, instead of damages, an account of profits. This requires the court to assess the profits, which the infringer has made as a result of his infringing acts, and to pay these over to the right holder.]

[Answer 12: Usually the plaintiff is required to institute the action by filing a claim form before applying for provisional measure. In cases of extreme urgency, an interim injunction may be granted on an application without notice by the right holder. When an order is made in this circumstance, the applicant must within seven (7) days before a date is fixed for further consideration of the application, serve the respondent personally with the application for the interim order, the evidence on an affidavit in support of the application, any interim order made without notice, and notice of the date and time on which the court will further consider the application. Strict guidelines will be given by the judge granting interim injunction without notice for the return hearing when the respondent will be afforded an opportunity to be heard. On the return hearing the general principles governing interim injunctions will be applied and also key measures in affording protection to the respondent against damages that he may incur in the event that the provisional measure is proved to be unjustified. These could include undertakings by the applicant supported by bond to secure the payment of damages or less commonly be a payment of money into Court.]

(b) Administrative measures

There are no provisions in the laws of Antigua and Barbuda whereby provisional relief can be given by an administrative body, save as regards border measures discussed in the answers to questions 15-19 below.

[Answer 15: Indicate for which goods it is possible to apply for the suspension by the customs authorities of the release into free circulation, in particular whether these procedures are available also in respect of goods which involve infringements of intellectual property rights other than counterfeit trademark or pirated copyright goods as defined in the TRIPS Agreement (footnote to Article 51) Under the inherent jurisdiction of the High Court, under Common Law, procedures exist that enable a right holder who has valid grounds for suspecting that the importation of goods infringe any intellectual property right (i.e. rights in respect of copyright and related rights, trademarks, geographical indications, industrial designs, patents and layout-designs of integrated circuits) to apply to the court for an order for the suspension by the Customs Authorities of the release into free circulation of such goods. The existing judicial procedures cover the evidence required to be furnished, security or equivalent assurance, notice to all interested persons, duration of suspension, indemnification of the importer and of the owner of the goods (and all other person entitled to indemnification) and right of inspection and information. In addition to the procedures mentioned and referred to above, and in the answers to questions 5 and 10, the procedures set out below exist in Antigua and Barbuda. Section 50 of the Copyright Bill 2001 allows the Antigua and Barbuda Customs Authorities to seize imported copies of published copyright material if a notice of objection to importation of the copies has been given to the Comptroller of Customs and Excise. The material that must be subject of such copies is published works of sound recordings. Importation of any article by a person for his private and domestic use is not prohibited under subsection (4) of section 50, which states that a person will not be liable for any penalty under the Act other than forfeiture of the goods. Specify, together with relevant criteria, any imports excluded from the application of such procedures (such as goods from another member of a customs union, goods in transit or de minimis imports). Do the procedures apply to the imports of goods put on the market in another country by or with the consent of the right holder and to goods destined for exportation? The Copyright Bill allows for the interdiction of such goods where their importation is prohibited by the copyright owner. See the answer given to question 15 above. As to the import of goods put on the market in another country, the Patents Bill and Industrial Designs Bill provide expressly for national exhaustion. The Trade Marks Bill and the Layout-Designs Bill do not contain an express provision on the level of exhaustion.]

[Answer 16: Section 50 of the Copyright Bill states that the competent authority to suspend the release of the goods is the Comptroller of Customs and Excise. To initiate the seizure of copies or counterfeit goods, the copyright owner, exclusive licensee or authorised user must provide a written notice of objection to importation to the Comptroller of Customs together with any prescribed documents. A notice remains in force for a period not exceeding five years from the day on which the notice is given and shall not extend beyond the end of the period for which the copyright may subsist. The Comptroller may not seize copies or goods unless the copyright owner, exclusive licensee or the trademark owner of authorised user provides a security to cover the expense that may be incurred by the Comptroller. Under the Copyright Act, the Comptroller may seize copies if a written notice of objection has been given to the Comptroller, and if the copies are imported into Antigua and Barbuda for trade or some other purpose that will prejudicially affect the owner of copyright or neighbouring rights. Under the Trade Marks Bill, if goods have a trademark that is identical with, or deceptively similar to, a notified trademark and are goods in a class for which the trademark is registered, the right holder can obtain an order for the detention or seizure of such goods, and he will then notify the Comptroller of Customs who will seize the infringing goods in accordance with the order. Section 6(2) of the Bill gives this right to the right holder in this particular case. Once goods or copies have been seized, the Comptroller must give notice of the seizure, to the objector and the importer or owner, and the notice must identify the copies or goods. If an infringement action has not been started within the required time the Comptroller must release the seized copies or goods to their importer or designated owner. This will be spelt out in the Copyright Regulations. Under the Regulations, the Comptroller will be able to release the seized goods to their designated owner at any time before the end of the action period, if new information has come to hand after the seizure which demonstrates that there are no reasonable grounds for believing that the notified trademark or pirated copies were infringed and no action for infringement has been brought by the objector. In addition, the Comptroller may permit the objector and the designated owner sufficient opportunity to inspect and remove a sample of the seized copies. In deciding the infringement case, the court may order that the seized copies of goods be released to their importer or designated owner subject to conditions (if any) that the court considers fit to impose, or it may order that the seized goods be forfeited to the State. Under the Trade Marks Bill, if the court decides that there was no infringement and the designated owner, or defendant to the infringement action, suffers loss or damage, the objector may be ordered to pay compensation. The Customs (Management and Control) Act will be amended to incorporate the necessary measures for the enforcement of intellectual property rights especially the enhancement of the powers of Customs and other officials operating under this Act.]

[Answer 17: Under the Common Law system, judicial measures may be applied in border situations and in this regard the answer to question 8 above is applicable. How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation? Neither the individual Bills on intellectual property nor the Customs (Control and Management) Act of 1993 have any provision placing a time limit on the suspension of the release of goods into free circulation. If there is to be a time limit for a particular action to take place in order for the Comptroller of Customs to authorise their release, then the order from the court will specify accordingly.]

[Answer 18: Are competent authorities required to act upon their own initiative and, if so, in what circumstance? There is no provision requiring ex officio action by Customs Authorities. All actions must be initiated by the copyright owner or exclusive licensee or by the owner (or in some circumstances an authorised user of a trademark) of the industrial property right. Under the Copyright Bill, copies may only be seized if the copyright/neighbouring rights owner or exclusive licensee gives a notice of objection to the importation of the copies. Are there any special provisions applicable to ex officio action? No, there are no such provisions.]

[Answer 19: The Customs Authorities are not empowered to order remedies for infringement. They can seize infringing copies of counterfeit goods and dispose of those copies or goods if they are forfeited by the importer (Copyright Act) or by a decision of the court. All remedies are decided by the courts.]

Indicate for which goods it is possible to apply for the suspension by the customs authorities of the release into free circulation, in particular whether these procedures are available also in respect of goods which involve infringements of intellectual property rights other than counterfeit trademark or pirated copyright goods as defined in the TRIPS Agreement (footnote to Article 51) Under the inherent jurisdiction of the High Court, under Common Law, procedures exist that enable a right holder who has valid grounds for suspecting that the importation of goods infringe any intellectual property right (i.e. rights in respect of copyright and related rights, trademarks, geographical indications, industrial designs, patents and layout-designs of integrated circuits) to apply to the court for an order for the suspension by the Customs Authorities of the release into free circulation of such goods. The existing judicial procedures cover the evidence required to be furnished, security or equivalent assurance, notice to all interested persons, duration of suspension, indemnification of the importer and of the owner of the goods (and all other person entitled to indemnification) and right of inspection and information. In addition to the procedures mentioned and referred to above, and in the answers to questions 5 and 10, the procedures set out below exist in Antigua and Barbuda. Section 50 of the Copyright Bill 2001 allows the Antigua and Barbuda Customs Authorities to seize imported copies of published copyright material if a notice of objection to importation of the copies has been given to the Comptroller of Customs and Excise. The material that must be subject of such copies is published works of sound recordings. Importation of any article by a person for his private and domestic use is not prohibited under subsection (4) of section 50, which states that a person will not be liable for any penalty under the Act other than forfeiture of the goods. Specify, together with relevant criteria, any imports excluded from the application of such procedures (such as goods from another member of a customs union, goods in transit or de minimis imports). Do the procedures apply to the imports of goods put on the market in another country by or with the consent of the right holder and to goods destined for exportation? The Copyright Bill allows for the interdiction of such goods where their importation is prohibited by the copyright owner. See the answer given to question 15 above. As to the import of goods put on the market in another country, the Patents Bill and Industrial Designs Bill provide expressly for national exhaustion. The Trade Marks Bill and the Layout-Designs Bill do not contain an express provision on the level of exhaustion.

[Answer 5: Under the Common Law system the court has the following powers: The High Court has power to adjudicate upon enforcement of intellectual property rights and can take provisional measures before full trial on the merits of a case, including the grant of interim or preliminary injunctions called interlocutory injunctions. The Court may also grant relief of the type known as an Anton Piller Order after the case in which this relief was first made. Under this order, the defendant is required to admit to its premises, as named in the order, persons named in the order and supervised by an independent attorney to search for and take into custody any document and things of the type specified in the order in order to preserve such as evidence for a trial. The defendant is also usually enjoined from activity likely to be an infringement of the stated intellectual property right and is required to make an affidavit disclosing the source of the articles which have already left the premises. The courts can also grant what is called a Mareva injunction, again after the case in which it was first made. This is an order for the blocking of bank account, and other assets of the defendant pending review of these by the court. As with the Mareva injunction, this writ will normally only be used when it is feared that a defendant will leave the jurisdiction of the court before damages awarded by the court have been paid. Yet a further provisional measure, is an application to the court for an interim award of damages. To obtain this, the plaintiff must show to the court that it is likely that at full trial the court will award substantial damages and that, pending the assessment of these at trial, it is just that there should be an interim payment. The Court may make it a condition of such payment that the defendant will take steps to preserve the sum for reparation (with interest) should the court at trial award the plaintiff no damages, or a lesser sum than the interim payment.]

[Answer 10: Under the Common Law system the court has the following powers: The High Court has power to adjudicate upon enforcement of intellectual property rights and can take provisional measures before full trial on the merits of a case, including the grant of interim or preliminary injunctions called interlocutory injunctions. The Court may also grant relief of the type known as an Anton Piller Order after the case in which this relief was first made. Under this order, the defendant is required to admit to its premises, as named in the order, persons named in the order and supervised by an independent attorney to search for and take into custody any document and things of the type specified in the order in order to preserve such as evidence for a trial. The defendant is also usually enjoined from activity likely to be an infringement of the stated intellectual property right and is required to make an affidavit disclosing the source of the articles which have already left the premises. The courts can also grant what is called a Mareva injunction, again after the case in which it was first made. This is an order for the blocking of bank account, and other assets of the defendant pending review of these by the court. As with the Mareva injunction, this writ will normally only be used when it is feared that a defendant will leave the jurisdiction of the court before damages awarded by the court have been paid. Yet a further provisional measure, is an application to the court for an interim award of damages. To obtain this, the plaintiff must show to the court that it is likely that at full trial the court will award substantial damages and that, pending the assessment of these at trial, it is just that there should be an interim payment. The Court may make it a condition of such payment that the defendant will take steps to preserve the sum for reparation (with interest) should the court at trial award the plaintiff no damages, or a lesser sum than the interim payment.]

Section 50 of the Copyright Bill states that the competent authority to suspend the release of the goods is the Comptroller of Customs and Excise. To initiate the seizure of copies or counterfeit goods, the copyright owner, exclusive licensee or authorised user must provide a written notice of objection to importation to the Comptroller of Customs together with any prescribed documents. A notice remains in force for a period not exceeding five years from the day on which the notice is given and shall not extend beyond the end of the period for which the copyright may subsist. The Comptroller may not seize copies or goods unless the copyright owner, exclusive licensee or the trademark owner of authorised user provides a security to cover the expense that may be incurred by the Comptroller. Under the Copyright Act, the Comptroller may seize copies if a written notice of objection has been given to the Comptroller, and if the copies are imported into Antigua and Barbuda for trade or some other purpose that will prejudicially affect the owner of copyright or neighbouring rights. Under the Trade Marks Bill, if goods have a trademark that is identical with, or deceptively similar to, a notified trademark and are goods in a class for which the trademark is registered, the right holder can obtain an order for the detention or seizure of such goods, and he will then notify the Comptroller of Customs who will seize the infringing goods in accordance with the order. Section 6(2) of the Bill gives this right to the right holder in this particular case. Once goods or copies have been seized, the Comptroller must give notice of the seizure, to the objector and the importer or owner, and the notice must identify the copies or goods. If an infringement action has not been started within the required time the Comptroller must release the seized copies or goods to their importer or designated owner. This will be spelt out in the Copyright Regulations. Under the Regulations, the Comptroller will be able to release the seized goods to their designated owner at any time before the end of the action period, if new information has come to hand after the seizure which demonstrates that there are no reasonable grounds for believing that the notified trademark or pirated copies were infringed and no action for infringement has been brought by the objector. In addition, the Comptroller may permit the objector and the designated owner sufficient opportunity to inspect and remove a sample of the seized copies. In deciding the infringement case, the court may order that the seized copies of goods be released to their importer or designated owner subject to conditions (if any) that the court considers fit to impose, or it may order that the seized goods be forfeited to the State. Under the Trade Marks Bill, if the court decides that there was no infringement and the designated owner, or defendant to the infringement action, suffers loss or damage, the objector may be ordered to pay compensation. The Customs (Management and Control) Act will be amended to incorporate the necessary measures for the enforcement of intellectual property rights especially the enhancement of the powers of Customs and other officials operating under this Act.

Under the Common Law system, judicial measures may be applied in border situations and in this regard the answer to question 8 above is applicable. How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation? Neither the individual Bills on intellectual property nor the Customs (Control and Management) Act of 1993 have any provision placing a time limit on the suspension of the release of goods into free circulation. If there is to be a time limit for a particular action to take place in order for the Comptroller of Customs to authorise their release, then the order from the court will specify accordingly.

[Answer 8: Describe provisions governing the length and cost of proceedings There are no such provisions in the laws of Antigua and Barbuda. The Rules of Court stipulate periods for dealing with various pre-trial matters, which periods can usually be extended by agreement between the parties, without application to the court. However, at any stage, a party may apply to the court for a specific order that the litigation against the defaulting party be dismissed or for an order requiring the opposing party to take some step within a defined period, failing which the litigation should automatically be determined against that party. Before the substantive trial takes place, there will be many and varied pre-trial procedures which the parties may be required or choose to employ. There is first a formal exchange of pleadings, which sets out the allegations made against a party and the defences that the opposing party proposes to raise against these. These pleadings do not set out to enumerate the detailed facts which will have to be established if the time make admissions which reduces the issues in contention and there determination of those live issues, for which see the answer to question 3 above. When these pre-trial procedures are judged to be complete, the case may be set down for trial. Provide any available data on the actual duration of proceedings and their cost There is no useful data available since the duration and cost of proceedings for enforcement of intellectual property rights depend on the complexity of the particular case and whether (and if so at what stage) settlement is reached before the trial of the substantive issues.]

Are competent authorities required to act upon their own initiative and, if so, in what circumstance? There is no provision requiring ex officio action by Customs Authorities. All actions must be initiated by the copyright owner or exclusive licensee or by the owner (or in some circumstances an authorised user of a trademark) of the industrial property right. Under the Copyright Bill, copies may only be seized if the copyright/neighbouring rights owner or exclusive licensee gives a notice of objection to the importation of the copies. Are there any special provisions applicable to ex officio action? No, there are no such provisions.

The Customs Authorities are not empowered to order remedies for infringement. They can seize infringing copies of counterfeit goods and dispose of those copies or goods if they are forfeited by the importer (Copyright Act) or by a decision of the court. All remedies are decided by the courts.

The Magistrates’ Court, in respect of summary offences, the Criminal Assizes, in respect of indictable offences and (on appeal) the Court of Appeal have jurisdiction over criminal acts of infringement and final appeal lies to the Judicial Committee of the Privy Council.

An offence of trademark infringement is committed under section 23 of the Trade Marks Bill. The detailed provision of this enactment can be summarised as applying when there has been unauthorised use of a registered trademark (or of a mark likely to be mistaken for such a mark) by way of application of such mark to goods or to their packaging, or by the sale, possession, custody or control of such goods, or where such mark, or where a person has possession, custody or control of such goods, or where such mark is applied to labelling or packaging of goods, or used in a business paper or in advertising in relation to goods, provided in each case that the action has been taken with a view to gain for himself or another, or with intent to cause loss to another, and, anyway, without the consent of the proprietor. These offences are also extended to possession, custody or control of material for use in labelling, packaging or advertising goods bearing such a mark, and to the making, possession, custody or control of articles specifically designed or adapted for making copies of such mark, provided in each such case that the activity has been “in the course of business”. However, no offence is committed under these summarised provisions unless the goods in question are goods for which the mark is registered or unless the trademark has such a reputation in Antigua and Barbuda that its unauthorised use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trademark, and also where the defendant is able to show that he believed on reasonable grounds that his actions did not involve a (civil) infringement of the trademark registration. An offence of infringement of copyright or neighbouring rights is committed under the provisions of section 46 of the Copyright Bill. Under this provision, an infringement of any right protected under the Act for profit-making purposes committed by a defendant who “knows or has reason to believe” that he is infringing is an offence. Under section 21(3) of the Industrial Designs Bill the performance, intentionally, of any act under section 9 including making, selling, importing for commercial purposes, constitutes and offence. Under section 15(1) of the Integrated Circuits Topography Bill, the performance, knowingly, of any act under section 6, including making, reproducing, importing, selling or otherwise distributing the infringed product for commercial purposes, constitutes an offence. Under section 34 of the Patents Bill, the performance of any act listed in section 11 without the right holder's consent, constitutes an infringement.

The Antigua and Barbuda Police are responsible for investigating suspected offences under any legislation creating criminal offences. This will include intellectual property legislation, whether or not complaints have been received. The decision on whether to prosecute for a suspected offence is a matter for the Director of Public Prosecutions. In practice, most police action results from complaints and information received. This does not preclude a private prosecution for these offences (see the answer to question 23 below).

[Answer 23: Yes, any person or body having sufficient personal or public reason for seeking enforcement of the criminal law can bring a prosecution. However, a fiat to prosecute must be obtained from the Director of Public Prosecutions.]

Yes, any person or body having sufficient personal or public reason for seeking enforcement of the criminal law can bring a prosecution. However, a fiat to prosecute must be obtained from the Director of Public Prosecutions.

Copyright Under section 46 of the Copyright Bill, the penalty for infringement for profit-making purposes by a person knowing or having reason to believe that he is committing an infringement, in summary conviction is a fine between $5000.00 EC and $10,000.00 EC and to two or three years imprisonment, depending on the type of infringement. Where there has been no decision on such remedies in civil proceedings, the magistrate has the authority to order the impounding of suspected copies of works on sound recordings, as well as the packaging of the implements that could be used for the making of, and the documents, accounts or business papers referring to such copies; to order the forfeiture and seizure of all copies of works or sound recordings manufactured, reproduced, distributed, sold or otherwise used, intended for use or possessed with intent to use in contravention of the rights of the owner and all plates, moulds, masters, tapes, film negatives or other articles by means of which such copies of works or sound recordings may be reproduced and all electronic, mechanical or other devices for manufacturing, reproducing or assembling such copies of works or sound recordings; to order the destruction or other reasonable disposition of infringing copies and their packaging outside the channels of commerce; where there is danger that implements may be used to commit or continue to commit acts of infringements, to order their destruction or reasonable disposition outside the channels of commerce. Where an offence under section 46 committed by a body corporate is proved to have been committed with the consent or connivance or attributable to neglect on the part of any director, manager, secretary or person purporting to act in any such capacity, he as well as the body corporate is guilty and liable to the above penalties. Trademarks Under section 23 of the Trade Marks Bill, it is an offence for a person to apply to goods or their packaging a mark identical to, or likely to be mistaken for, a registered trademark, sell or let for hire, offer or expose for sale or hire or distribute goods which bear or the packaging of which bears such a mark, has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything by himself or another which would be an offence as mentioned above. The penalty on summary conviction is a fine of $100,000 and imprisonment for five (5) years. Patents Under section 34 of the Patent Bill, it is an offence for a person to knowingly and wilfully make, import, offer for sale, sell, use the product, or the stocking of the product for sale or use, or the use of the process patented without the consent of owner or the licensee of. The penalty on summary conviction is a fine of $100,000 and imprisonment for three (3) years. Industrial designs Section 21 provides that any person who knowingly makes, sells, or imports articles incorporating the industrial design without the consent of the right holder commits an offence. The penalty on summary conviction is a fine of $50,000 and imprisonment for three (3) years. Integrated circuits and topography bill Under section 15 it is an offence to perform any of the acts listed in section 6 without the authorisation of the right holder. These acts include the reproduction of the protected layout-design in its entirety or any part thereof, importing, selling, or otherwise distributing for commercial purposes the protected design or integrated circuit incorporating the layout- design. The penalty on summary conviction is a fine of $10,000.00 and imprisonment for five (5) years, and the court may also order the seizure, forfeiture and destruction of the layout-designs, integrated circuits or articles concerned and of any materials or implements, the predominant use of which has been in the commission of the offence. Geographical indications Section 7 provides that any person who knowingly and with intent to deceive, performs any act of the acts referred to in section 3, such as the means in the designation or presentation of a good in question originates in a geographical area other than the true place of origin, commits an offence. Any use constituting an unfair competition within the meaning of Article 10bis of the Paris Convention, and the use of a geographical indication identifying wines or spirits not originating in the place indicated, are also offences. The penalty on summary conviction is a fine of $50,000 and imprisonment for three (3) years.

There are no provisions governing the length and cost of proceedings. See the answer to question 8 above.

[Answer 8: Describe provisions governing the length and cost of proceedings There are no such provisions in the laws of Antigua and Barbuda. The Rules of Court stipulate periods for dealing with various pre-trial matters, which periods can usually be extended by agreement between the parties, without application to the court. However, at any stage, a party may apply to the court for a specific order that the litigation against the defaulting party be dismissed or for an order requiring the opposing party to take some step within a defined period, failing which the litigation should automatically be determined against that party. Before the substantive trial takes place, there will be many and varied pre-trial procedures which the parties may be required or choose to employ. There is first a formal exchange of pleadings, which sets out the allegations made against a party and the defences that the opposing party proposes to raise against these. These pleadings do not set out to enumerate the detailed facts which will have to be established if the time make admissions which reduces the issues in contention and there determination of those live issues, for which see the answer to question 3 above. When these pre-trial procedures are judged to be complete, the case may be set down for trial. Provide any available data on the actual duration of proceedings and their cost There is no useful data available since the duration and cost of proceedings for enforcement of intellectual property rights depend on the complexity of the particular case and whether (and if so at what stage) settlement is reached before the trial of the substantive issues.]