The general jurisdiction to grant injunctions is expressed in Chapter IX of the Specific Relief Act 1950 and paragraph 6 of the schedule to the Courts of Judicature Act 1964. In addition, the jurisdiction to grant injunctions is part of the equitable jurisdiction of the court. For trademark infringement and passing-off cases, the grant of an injunction is governed by the general provisions mentioned above. For copyright infringement cases, Section 37(1) of the Copyright Act 1987 states that relief by way of injunction shall be available to the plaintiff. This is also the case in patent infringement cases wherein Section 60(1) of the Patents Act 1983 lays down that if an infringement is committed, the court shall grant an injunction. Likewise, Section 35(1) of the Industrial Designs Act 1996 echoes the same tenet.
In practice, a plaintiff who has succeeded at trial is granted a permanent injunction as a matter of course. In very few cases final injunctions have been refused, and these are limited to situations where the scale of infringement is trivial or it is probable or certain that the infringing act will not be repeated by the defendant.
Damages, including recovery of profits, and expenses, including attorney’s fees
Damages are a matter of right. A successful plaintiff is entitled to compensation for any harm caused to him which flows directly and naturally from the tortuous act. Damages is a legal remedy for which there is no discretion to refuse in intellectual property right cases, unless the case was wholly quia timet in nature.
In trademark infringement and passing-off cases, the general principles on damages are relied upon.
In copyright infringement cases, Section 37(1) of the Copyright Act 1987 makes specific mention of relief by way of damages or accounts that shall be available to the plaintiff. Further, Section 37(2) of the same allows the court to award additional damages for the infringement after having regard to the circumstances of the case, namely the flagrancy of the infringement and whether any benefit was shown to have accrued to the defendant by reason of the infringement. This type of damages, i.e. exemplary and aggravated damages are thought to be awarded for such matters such as injury to the author’s reputation or feelings, unjust enrichment, existence of scandalous conduct, deceit and such which includes deliberate and calculated copyright infringement.
In patent infringement cases, Section 60(1) of the Patents Act 1983 states that damages shall be awarded to the patentee if he has proven an infringement has occurred.
Section 35(1) of the Industrial Designs Act 1996 lays down that a court may award damages or an account of profits. However, Section 35(3) of the same provides for a situation where the court may exercise its discretion to refuse to award damages or to make an order for an account of profits. If the defendant satisfies the court that firstly at the time of the infringement he was not aware that the industrial design was registered and secondly he had prior to that time taken all reasonable steps to ascertain whether the industrial design had been registered, such an award may be refused.
Although the onus is upon the plaintiff to show what damage has been suffered, it is not necessary to prove any particular damage in order to succeed. The court will normally assume that the defendant’s wrongful acts have caused harm and if the quantification of it is difficult, or not susceptible of mathematical accuracy, a fair or nominal figure for compensation will normally be awarded. Some heads of damages which are taken into account when quantifying damages are listed as below:
- loss of sales and profits,
- damage to goodwill or reputation,
- loss of licensing opportunity, and
- stress of competition forcing plaintiff to lower his prices.
- Account of profits
The plaintiff has an option whether to claim either damages or profits but he cannot have both. The principle of an account is that the defendant is treated as having carried on his infringing activities on behalf of the intellectual property right owner and is therefore under a duty to hand over to the intellectual property right owner the profits made by the infringement. Generally, an account of profits is an equitable remedy and there is a discretion to refuse it or to limit it to take into account such factors as the defendant’s innocence, inequitable conduct by the plaintiff or delay prejudicial to the defendant.
Essentially, there are two sets of costs in any civil action. The first is party-to-party costs or costs as between the parties, i.e. costs including fees, charges, disbursements, expenses and remuneration which one party may recover from the other party. The second is solicitor-and-own-client costs or costs payable to a solicitor by his own client.
The power of the court to award costs is derived from paragraph 15 of the schedule to the Courts of Judicature Act 1964, and the manner in which it is to exercise this power is set out in Order 59 rule 2(2) of the Rules of the High Court 1980. The costs of an incident to an intellectual property right action, as the costs in any other action, are in the discretion of the court which has full power to determine whom and to what extent such costs should be paid.
The normal order is for costs to follow the event. Generally the court follows the ordinary rule that the unsuccessful party shall pay the costs of the litigation, such costs being taxed upon the usual scale between party to party. In a usual case, a party who is awarded costs will still be out of pocket to the extent that the costs payable to his solicitor exceed the costs he has recovered from his opponent. This happens because of the different bases for the assessment of costs which apply as to recovery between the parties (the party and party basis) and recovery by the solicitor from his client (the solicitor and client basis).
Only in isolated cases have the successful intellectual property right plaintiffs been refused relief at trial and have been ordered to pay the costs of the action, e.g. the defendant offered undertaking at an early stage of the trial and the plaintiff refused the offer, trivial case where action commenced without notice to an innocent purchaser, etc. There are also a handful of instances where the successful defendant has been refused costs, e.g. the defendant acted dishonestly.
Destruction or other disposal of infringing goods and materials/implements for their production
Delivery up of the infringing goods or destruction on oath is ancillary to the grant of an injunction. The power of the court to grant this remedy evolved from the equitable principles: it is not ordered because the plaintiff has any sort of proprietary right over the items. Though the normal form of the order is for actual destruction or delivery up of the infringing articles, it may be modified in certain cases. For example, in trademark infringement cases an order for obliteration/erasure of the infringing mark may be ordered if possible, and in patent infringement cases if the infringing article can be rendered non-infringing by some alteration or by removal of some part.
An order for delivery up or destruction of materials/implements to produce the infringing article will not be granted if the materials/implements are not themselves an infringement but may be used as part of an infringing apparatus. For instance, in literary copyright infringement cases the printing plates may be the subject matter of such an order but it is very unlikely that the courts would include the actual printing machine itself as part of the order for destruction.
The defendant is not entitled to any compensation for loss caused to him by such destruction or delivery up and cannot set off the value of goods delivered up against a claim for damages.
Any other remedies
The court also has equitable powers to order that the defendant publishes corrective statements and apologies to correct the effect of the infringement.