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

United Kingdom

(a) Civil judicial procedures and remedies

The United Kingdom has separate courts for the adjudication of civil and criminal matters. (a)In England and Wales civil jurisdiction is divided between the “High Court” and a system of “county courts” for the adjudication of matters of lesser importance. The High Court has three Divisions with most IPR disputes falling within the jurisdiction of the “Chancery Division”. Within this Division there is a specialist “Patents Court” which has exclusive jurisdiction to hear disputes concerning patents and registered designs. The judges of this Patents Court are specially assigned and are usually persons who, before their appointment, had extensive experience as advocates in IPR disputes. These judges are also general judges of the Chancery Division and, as such, are often assigned cases relating to enforcement of trademarks (whether registered or unregistered) and of copyrights (including rights related thereto). Below the High Court are a system of “county courts” intended for adjudication of more minor disputes. These county courts have jurisdiction over unregistered IPRs, but not over registered ones. However, in 1990, there was established a “Patents County Court” (with jurisdiction throughout England and Wales) before which disputes concerning patents, registered designs and unregistered design rights may be brought). This court does not have jurisdiction in relation to enforcement of registered trademarks, but this lack of jurisdiction is currently being reviewed. (b)In Scotland, the equivalent of the English High Court is the Court of Session, and the “sheriff courts” are the equivalent of the English “county courts“. However, there is no specialist “patents court”, although one judge of the Court of Session” is nominated as the “Patents Judge” before whom are tried cases which in England and Wales would come before its Patents Court. The Court of Session alone has jurisdiction in relation to proceedings principally concerned with the registration of validity of registered IPRs. (c)In Northern Ireland, the position is similar with a High Court of Northern Ireland and a series of county courts for more minor disputes. However, there has been little litigation on IPRs in this territory and, consequently, no specialist patents courts have been created. (d)As for appeals, there is (in each of England and Wales, Scotland and Northern Ireland) a Court of Appeal (that in Scotland being known as “the Inner House of the Court of Session”) to which there is an automatic right of appeal from the High Court (in Scotland, the Outer House of the Court of Session) and from the Patents County Court in matters of enforcement of IPRs. From such courts of appeal, a further appeal is possible to the Judicial Committee of the House of Lords. This is a Committee of the Upper House of the Legislature which is constituted by a number of “Law Lords” who are senior judges appointed to hear final appeals from the courts below. Such appeals can usually only be brought with leave of the court below, or upon leave being given by the House of Lords itself, acting through a sub committee of its Judicial Committee. In England and Wales, enforcement of patents, registered designs and unregistered design rights can take place (largely at the option of the rights holder) either in the Patents Court (part of the Chancery Division of the High Court) or in the Patents County Court. Enforcement of registered trademarks is, at present, only possible before the High Court (with cases normally heard before its Chancery Division). Both the High Court (again normally through its Chancery Division), as well as the various county courts, have jurisdiction over enforcement of other forms of IPRs. In Scotland, enforcement is mainly before the Court of Session. In Northern Ireland, enforcement of IPRs is mainly before the High Courts which exist in those territories.

(1) Which persons have standing to assert IPRs? In the case of registered IPRs (as set out in Section A (a) (c) of the Introductory Remarks), the proprietor of the right, and also any “exclusive licensee” thereunder (being a licensee under the IPR with some right under it which is exclusive even of the rightholder) has a standing to assert that IPR, provided that such person is recorded as proprietor or exclusive licensee in the appropriate register of those rights. However, an exclusive trademark licensee may not bring infringement proceedings against the registered proprietor of the mark. In addition, a registered non exclusive licensee under a trademark may (unless the licence stipulates to the contrary) call upon the registered proprietor to commence enforcement proceedings and, if this is not done, such licensee may then do so in his own name as if he were the proprietor. In the case of unregistered design rights and copyrights, enforcement proceedings may be brought by anyone claiming to be the owner of such right, either as a result of creation or of subsequent operation of law or by virtue of assignment or other transmission of the right. Such enforcement proceedings can also be brought (except against the owner) by an exclusive licensee (as defined above). Unregistered trademarks are enforced by a “passing off” action in which the plaintiff must show that the defendant has misappropriated some part of the plaintiff's “goodwill”, that is that, as a result of a reputation gained from past activities, members of the public are likely to be misled by the acts of the defendant as to the origin of goods or services for which the public has an expectation that such are associated with the plaintiff. Likewise, an action for the protection of trade secrets may be brought by any person claiming to be the owner of such secret and to have been damaged by an unauthorized disclosure of the same. (2) How may they be represented? Before the High Court, a natural person may appear in person, but a corporate entity must be represented. Representation (in the sense of having direct contact with the litigating party and having responsibility for the general conduct of the litigation) is with a practising solicitor (who is formally an officer of the court subject to its control in disciplinary matters). However, before the High Court (in England and Wales, or in Northern Ireland), only counsel (that is persons who are practising barristers) have a right of audience (that is a right to make oral submissions to that court), and these persons are instructed by solicitors and not directly by the litigating party. Before the county courts (including the specialist Patents County Court in England and Wales) a solicitor usually (though not always) has a concurrent right of audience with that of a barrister; and, in the Patents County Court, registered patent agents (also known as patent attorneys) have (with solicitors) both a right of representation and a right of audience. Also, in that court, counsel may act on direct instructions from the litigating party. In Scotland, a person may be represented in the Court of Session only by an advocate or by a solicitor having a right of audience before that court and a juristic person must be so represented. In the Sheriff Court a person may generally be represented only by an advocate or solicitor. An advocate will appear in either court only on the instructions of a solicitor. Both advocates and solicitors owe their paramount duty to the court and are in that sense officers of the court. (3)Are there any requirements for mandatory personal appearances before a court by the rightholder? There are no such requirements, but of course the rightholder must be identified as such, and (unless the defendant makes an appropriate admission) a person representing the rightholder must present proof of entitlement to present the claim in question.

In the legal systems operating within England, Wales and Northern Ireland, 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. 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 a 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 is regarded as a contempt of court punishable by the court as such. Where the opposing party can show that relevant documents are likely to exist, but which have not been disclosed in this discovery procedure, the court may make an order that such documents be produced or an affidavit sworn by a responsible person testifying on oath that no, or no further, such documents exist. However, the courts have discretion to waive or limit the requirement for discovery where it would be unduly onerous or where the court considers that production of a class of documents is not necessary in the interests of justice having regard to the desirability of limiting litigation costs. Using these powers, the Patents Court in England and Wales has recently issued a rule of practice that in patent litigation, without a specific order of the court, discovery on the issue of patent validity should be limited to documents generated two years either side of the priority date of the patent, and that no discovery need be given of the alleged infringement if the defendant has already submitted a detailed description of this. The courts also have wide powers to order inspection of premises by representatives of the opposing party upon sufficient reason for such an order being shown. In appropriate cases, such inspection proceedings may be ordered inaudita altera parte, as noted in Answer 11 below. In all such cases, there are safeguards for the protection of trade secrets, see Answer 4 below. The courts in Scotland have a common law power to compel the production of documents bearing on the issues of fact to be determined. The power is usually exercised by the court approving a specification of documents prepared by the party seeking production, appointing a commissioner and granting diligence for recovery of the documents. The exercise of the power is a matter of discretion and is always exercised subject to considerations of relevancy, confidentiality, public interest and the privilege of havers against self incrimination. The commissioner is usually an advocate or, in the sheriff court, a solicitor. The court also has a statutory power to order the inspection, photographing, preservation, custody and detention of documents and other property which appear to the court to be property as to which question may relevantly arise in any existing civil proceedings or in civil proceedings which are likely to be brought. It may order the production and recovery of any such property, the taking of samples thereof, and the carrying out of any experiments thereon or therewith. In relation to the statutory power, the privilege of havers against self incrimination cannot be claimed in respect of proceedings for infringement, to obtain disclosure of information about infringement or to prevent any apprehended infringement of IPR.

The production of documents in the discovery procedure in England and Wales, and in Northern Ireland, as outlined in Answer 3 above, besides excluding documents of a legal nature for which a claim to privilege can be made, is subject to “the implied undertaking”. This is an automatic, unwritten, promise to the court that the documents inspected or provided as part of that procedure should be kept confidential and the information contained therein must not be used for any purpose other than the litigation in which the discovery has been given. Any breach of this ”implied undertaking” is punishable as a “contempt of court”. While there is no automatic restriction as to the persons who are entitled to inspect documents produced in the discovery procedure (for the purposes of that litigation) where the documents disclose, or are likely to disclose, trade secrets, the court may impose a special “confidentiality order” defining a limited class of persons entitled to inspect the discovery documents, or a defined sub set of them. Such an order will permit inspection of the documents by potential expert witnesses who are independent of the opposing party, as well as by appointed lawyers (including patent attorneys), but will exclude employees and directors of that party, save for one person (who must give a specific confidentiality undertaking) in order that such party may have sufficient knowledge to take decisions on the future conduct of the litigation. A court will normally hold the substantive trial of the litigation in a court open to members of the public with a right for journalists to attend and report the proceedings and to receive copies of any evidence presented in writing. However, some of the preliminary proceedings may be held “in Chambers”, that is in a court closed to the public. Nevertheless, the court has power to sit in camera, that is in closed session, and it will do so where it is satisfied that it is necessary to do so to protect legitimate trade secrets. The court also has power to make orders protecting the identity of witnesses and/or to forbid the reporting of certain aspects of a case, but is reluctant to use these powers since the cardinal rule of British justice is that justice must not only be done, but it “must be seen to be done”. However, the mere fact that information presented to the court is of a confidential nature is not in itself sufficient for the court to order restrictions to protect it. This will only be ordered when this cardinal rule is assessed as being outweighed by a higher need to protect some information which it is not necessary for the proper public administration of justice to be made available to the public at large. The courts are generally reluctant to make such orders except in the context of trade secrets which the court readily accepts should be protected from public disclosure. In Scotland it is for a party claiming confidentiality to make that plea. Where confidentiality is claimed for any document or other property sought to be recovered under the procedures outlined in Question 3 such document or other property is, where practicable, enclosed in a sealed packet. A party seeking to have such a sealed packet opened or recovery allowed of property in respect of which confidentiality is claimed may do so only with the authority of the court. The court also has the power to impose conditions relating to the use of information recovered by commission and diligence. It may for example order that agreements are in place by means of appropriate undertakings or, if necessary by order of the court, to identify those persons to whom the information may be disclosed and on what conditions it is to be disclosed to them. The court may order caution for any loss, damage or expenses which may be incurred as a result of an order under the statutory power referred to in Question 3. In Scotland also court proceedings are normally open to the public but the courts have the discretion in special cases to sit in private.

(1) injunctions; While, in theory, the grant of an injunction, or the Scottish equivalent, an interdict, lies within the discretion of the court, it is customary, upon a rightholder having obtained a decision that the acts of the defendant have amounted to an infringement of an IPR, for the court to make an order injuncting the defendant from any further infringement of that IPR. Any defiance of that order will (at the suit of the rightholder, or upon the initiative of the court itself) be punishable by the court as a “contempt of court”. Until purged by an appropriate apology to the court, a person found to be in contempt can be fined an unlimited sum of money by the court and/or sent to prison for a defined or undefined period, and in the case of a corporate entity an order may be made for the sequestration of its assets. Of course, these are maximum powers, but their existence causes applications for relief for breach of an injunction to be rare. Such an injunction will normally last for the remainder of the life of the IPR but, in the case of misappropriation of confidential information, will normally be for a limited period sufficient to provide recompense to the rights holder. This is because the court recognises that other members of the public have had that secret made available to them and cannot, as members of the public, be prevented indefinitely from making use of information which is now available for others to use. (2) damages, including recovery of profits, and expenses, including attorney's fees; Once a court has found infringement of an IPR, the plaintiff is entitled automatically to an award of damages, unless the infringer (other than in instances of infringement of a registered trademark) can show that he was not aware of the existence of the IPR and had no reason to believe that such might exist. Normally, the court then orders the holding of a separate enquiry to assess the amount of those damages. Damages as such (though see sub answer (4) below) are assessed to compensate the rightholder for the loss which it has suffered as a result of the infringing acts which have been established. Such loss is not (by a recent decision of the English Patents Court) limited to the loss suffered directly by the rightholder but extends to any loss which can said to have been caused by, or which resulted from, the infringing act committed by the defendants. Thus, loss of sales of associated equipment, and from contracts for repairs and maintenance, have a sufficient causal connection to the infringing act as to be considered to flow directly from that infringement. The rightholder may thus be compensated for such associated losses. However, the rightholder will only be able to obtain compensation in the form of the profits lost by him if it can demonstrate to the court that,“but for” the infringing act, it would have made those profits. Where this cannot (as is the usual case) be shown, the court will assess the direct damage suffered by the rightholder by the infringing acts on the basis of a reasonable royalty; and this will be so where the rightholder has granted licences to third parties on terms which can be seen to indicate the level of such a royalty. In the case of infringement of copyright (or related right), or of an unregistered design right, the court can also award “additional damages” in cases of perceived flagrant infringement or where undue benefit has accrued to the infringer. As to expenses, and attorney's fees, it is a rule within the legal systems of England, Wales and Northern Ireland that the court makes an order in favour of the successful party that the losing party pays its costs (expenses in Scotland) “to be taxed if not otherwise agreed”. Under such an 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, such costs are assessed by a Court Taxing Master. However, as a party will normally spend more money on a case than a taxing master will consider reasonable, and as such Master will disallow all claimed costs for which there are not sufficient evidence of how the costs have been incurred and of receipts for expenditure, a successful party will, in actuality, probably recover only about 60% 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. An order for indemnity costs is mandatory if a defendant unsuccessfully challenges the validity of a patent which has previously been upheld in revocation proceedings and a“certificate of validity” has been issued. In Scotland the award of expenses is a matter for the discretion of the courts. The principle upon which the Scottish courts proceed in awarding expenses is that the cost of litigation should fall on the party who has caused the litigation. The general rule for applying this principle is that expenses are awarded in favour of the successful party. Where the application of the general rule would not carry out the principle the court will take account of conduct on the part of the successful party which may have unnecessarily or unreasonably caused or protracted the litigation. An account of expenses is prepared and, in the absence of agreement, taxed by the auditor of court as between party and party or as between solicitor and client. An award of expenses without qualification implies expenses taxed as between party and party. An account will not be taxed on the higher basis, i.e. as between solicitor and client unless expressly awarded by the court. Where the validity of a patent is unsuccessfully challenged that position is reversed by a legislative provision [Section 65 of the Patents Act 1977], i.e. it is provided that a party shall be entitled to expenses as between solicitor and client unless the court otherwise directs. (3)destruction or other disposal of infringing goods and materials/implements for their production; 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”. Such an order is routinely made, though with the infringer having the choice of destroying the articles (with verification on oath that he has done so), rather than allow the patentee access to those infringing products: export of the products as an alternative to delivery up or destruction would not normally be allowed, except perhaps in an exceptional case. For infringement of a registered design a similar order is probably available as part of the inherent powers of the court, though such power is not listed as such in the respective statute. For infringement of a registered trademark, the court may order the offending sign to be erased, removed or obliterated from infringing goods, materials 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 court can then order their destruction. Orders for such delivery up, and subsequent destruction, are also available as part of the criminal procedure for trademark infringement (see Answer 24(3) below). For infringement of copyright (or related right), or of an unregistered design right, the court may (as 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 Answer 24(3) below). Under the Common Law, the court likewise probably has inherent powers to make orders 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. (4) any other remedies. As an alternative to an award of damages, a rightholder, upon a finding 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 rightholder. Such an election must be made before holding an enquiry into the damages suffered by the rightholder as a result of the infringing acts (for which see sub answer (2) above). This remedy is rarely claimed because of the uncertainty of ascertaining the infringer's profits, bearing in mind the jurisprudential uncertainty of the extent to which overhead and central expenses incurred by the infringer can be taken into account. The remedy is most likely to be used in cases of infringement of IPRs where the rightholder has suffered no direct damage from the infringing acts, for example because of a lack of legitimate working of the right which has been infringed, or in cases of breach of confidence (including infringement of copyright by unauthorized publication of a work which the copyright owner wished to keep secret).

It is within the inherent powers of the courts of the United Kingdom 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. However, the courts are less inclined to make orders identifying the destination of infringing articles, and will generally not do so if the articles have been exported, though such will be done if the court is of the belief that it would be just to do so in the particular circumstances before it. However, uncertainty over inherent powers of the Scottish courts to order disclosure of information as to the identity of such third parties where proceedings had not commenced or were undefended, led to the enactment of section 19 of the Law Reform (Miscellaneous Provisions) (Scotland) Act 1985 which amended section 1 of the Administration of Justice (Scotland) Act 1972. As a result, the Scottish courts now have power under section 1 to order any person to disclose such information as he has as to the identity of any persons who appear to the court to be persons who might be witnesses in existing civil proceedings before that court or in civil proceedings which are likely to be brought; or might be defenders in any civil proceedings which appear to the court to be likely to be brought.

(1) Describe provisions relating to the indemnification of defendants wrongfully enjoined. A preliminary (interlocutory) injunction (interim interdict in Scotland) will only be ordered by a court on the basis of the plaintiff giving to the court an undertaking that, if the defendant is subsequently found to have been wrongly enjoined, the plaintiff will pay damages therefor 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 of the European Union. In Scotland there is no such undertaking. Interim interdict is granted entirely at the risk of the petitioner. He will be liable for the consequences of the interdict should the party interdicted thereafter show the application to have been wrongful and claim damages for loss sustained as a result of the interdict. The court in granting interim interdict may order caution to be found and where it does so interim interdict will not operate until caution is lodged. Upon an order for a final injunction after full trial, the court may likewise require such an undertaking (and security if appropriate) to be given if the unsuccessful defendant seeks to suspend the injunction pending appeal and the plaintiff objects to this. English law does not recognise as such an action for “unjust enrichment” and thus, if a defendant should be enjoined by a court from infringing an IPR and, subsequently, that IPR should be nullified in proceedings involving another party, the injunction would then lapse because of the lapse of the IPR under which it was granted, but the person enjoined would not have a remedy for being wrongfully enjoined, since (so far as he is concerned) the grant of the injunction was at the time a lawful act. (2) 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 the United Kingdom are (under the Common Law) immune from litigation in the event that their decisions may subsequently be overturned, either by an appellate court, or by a court in another case reaching a different conclusion. The Comptroller is (under the various IPR statutes relating to registered IPRs) generally immune from liability resulting from the performance of his statutory duties.

(1) Describe provisions governing the length and cost of proceedings. There are no such provisions in the laws of the United Kingdom. The length of proceedings for enforcement of IPRs is under the control of the court before which those proceedings are brought. The court in general does not keep to a pre set timetable. Rather 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 an order requiring the opposing party to take some step within a defined period, failing which the litigation should automatically be determined against it. 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. In England and Wales (and also in Northern Ireland), there is first a formal exchange of pleadings which sets out the allegations made against a party and the defences which 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 allegations are to succeed at the eventual trial. A party may at this time make admissions which reduces the issues in contention and there then follows the discovery of documents which relate to the determination of those live issues, for which see Answer 3 above. When these pre trial procedures are judged to be complete, the case may be “set down” for trial. Usually in IPR enforcement litigation, the parties request a fixed date for that trial and when this takes place will depend on the estimated length of trial and the slots available in the court diary. Before the trial, it is now customary for the parties to be required to exchange written statements of the evidence to be presented at the trial by at least any expert witnesses to be called, and probably also of witnesses of fact and also for the advocates to submit a written summary of their intended submissions. These procedures (applicable in England, Wales and Northern Ireland) have been designed to reduce the length of the eventual substantive trial which is largely an oral procedure with examination, and cross examination of witnesses who testify to the court on the basis of their personal experiences. Their effectiveness depends greatly upon the attitude adopted by both parties. This will depend upon the costs and time which a party may feel is necessary to expend if its case is to be put before the court to the extent thought desirable for success—of course assuming that a party can afford to do so. Suffice it to say, that measures are available for a speedy and relatively inexpensive resolution of proceedings, but litigating parties often feel that their position will be prejudiced if they take advantage of them. This is because the taking of steps to curtail expense and limit the time taken will usually be seen as carrying an unacceptable risk of weakening the party's case to an extent which ought not to be taken having regard to the sums of money at stake, and the likelihood of an injunction being granted (or of not being granted as the case may be), which might be avoided by a fuller presentation of a party's case. In Scotland, the object of the system of written pleadings is to give notice to the court and to opponents of the facts and propositions of law on which the party relies in support of his claim or defence. The pleadings define the issues and are the basis upon which procedural questions such as the ambit of any commission or diligence for the recovery of evidence are determined. The pleadings do not specify the evidence upon which a party proposes to rely to establish the facts averred and in general parties are not required to exchange written statements of the evidence to be presented by expert or other witnesses. However, since the court may refuse to award expenses in relation to a witness whose evidence is not in issue parties are encouraged to consider and agree what can agreed. Such matters are then incorporated in a joint minute of admissions in which parties accept for the purpose of the proceedings the facts set out in the minute as true. In proceedings under the Patents Act 1949 and 1977 the court may at a pre proof hearing order a meeting of experts for the purpose of producing a joint report on the general state of the art or order each party to make available to every other party a copy of any precognitions, or reports, of skilled witnesses on any matter which is not the subject of a joint report. In all types of cases, the emphasis is on allowing a defendant sufficient time properly to prepare and present the defence he wishes to put forward, unless the court sees a particular argument as so unlikely to be accepted by the court that it orders at a pre trial stage that such plea should be removed from the formal defence pleading. Nevertheless, having said this, the courts are fully aware of the need to make justice as cheap as possible and the rules of court for England and Wales have recently been revised, with further revisions in prospect, aimed at simplifying the trial procedures in this jurisdiction but consistent with the overriding interests of natural justice. It can be expected that these will be followed, at least in Northern Ireland. (2) Provide any available data on the actual duration of proceedings and their cost. Such data is not available and, even if it were, would be meaningless. This is because proceedings for enforcement of IPRs can have a very wide spectrum of complexity. A defendant may seek to challenge each and every fact alleged against him, or it may make admissions limiting the matters to be decided to a very few points which may be matters of law to be decided upon a statement of underlying facts agreed between the parties. The rhetorical question: “How long is a piece of string?” is particularly apposite here. A simple case may occupy a court for perhaps only half a day, whereas the substantive trial of an action for patent infringement has been known to occupy the English court for six months. On the one hand, there may be a simple and blatant case of trademark infringement to which there can be no defence. Such an action may be decided very quickly upon an application for summary judgment because no arguable defence is seen. If the court agrees, judgment can be given within a matter of weeks from the issue of the writ. However, in such a case, the probability is that the defendant will have voluntarily submitted to judgment in order to avoid the costs of a trial. In such a submission, the defendant can consent to an injunction being given against him, and the court will normally make any order which the parties, by consent, ask to be made, provided only that such an order would not go beyond the powers of the court. However, instead of a formal injunction, the defendant can give a voluntary undertaking to the court to cease and desist from the alleged infringing activity. Such an undertaking—because it is given to the court— has the same effect as an injunction, though perhaps not so damaging to the public image of the defendant. This, however, does not reflect Scottish practise. On the other hand, the enforcement of an IPR may involve very complicated issues of both fact and law, both on whether the IPR has been infringed and whether the IPR was validly granted. Such a dispute can occupy the court for several weeks of actual trial, one such case in 1979 lasting six months, with several years taken over the pre trial preparation. Such cases are rare, but they do exist. Any estimate of costs can only be anecdotal. However, it is unlikely that a contested case in the High Court could be taken to a conclusion for under £50,000 (mainly in attorney costs and expenses), except in a very simple case. Where the trial lasts more than three weeks, the costs of the proceedings can be expected to exceed £1,000,000 for each party, and considerably more if experiments are conducted by the parties for the purpose of providing evidence to be assessed by the court, or the case lasts longer than 15 days of trial in court. The costs of litigation in England and Wales (and also in Northern Ireland) are undoubtedly increased by the need to employ a team consisting of a barrister (advocate) to present the case orally before the court and a solicitor (to prepare the pleadings and be generally responsible for the preparation of the case). In an important IPR enforcement case (which is usually the position), it will be customary to engage both a senior barrister who is a Queen's Counsel, to present the case in court, assisted by a junior counsel. Also, it will be usual in patent litigation at least for the legal team to be augmented by a patent agent/attorney to assist in the preparation of the case for trial as regards its technological aspects. Nevertheless, the Patents County Court, instituted in 1990 as an alternative forum for resolution of patent and design litigation, does provide a means whereby a case can be conducted (including appearance in court) by a single person who can be a patent agent/attorney, a solicitor or a barrister. Thus, if financial means are limited, a case can be conducted in this forum at reduced cost, though only at the expense of reducing the legal effectiveness of the party's representation which may perhaps be by a relatively inexperienced person whose fees will be less. In short, the duration and costs of a case are governed only by the time and money which a party judges that it is necessary or desirable to expend in order to be successful in the litigation, and the ability to fund that expenditure. The complexity of the case is the other major factor. In recent years insurance schemes have become available under which a rightholder can insure against the costs of litigation to enforce his IPR; and also for potential defendants to take out insurance to fund a defence of litigation brought against them. It must also be added that a natural person without financial resources, or having only very limited financial resources, can be granted “legal aid” whereby litigation for enforcement of IPRs can be funded out of central funds. Such “legal aid” dependant on financial resources is calculated at the commencement of proceedings. Where a legally aided litigant is successful property recovered or preserved will go first to meet his outstanding liability to the legal aid funded.

(b) Administrative procedures and remedies

As stated in Section D of the Introductory Remarks, the UK Patent Office, through its head, the Comptroller, has some judicial powers which for present purposes can be regarded as providing “administrative remedies”. Leaving aside the grant of registered IPRs, and the powers to nullify (revoke) these (which are assumed to be outside of the terms of the present Checklist directed to “enforcement of IPRs”), the only power which the Comptroller has relating to such enforcement is a very limited one in relation to patent infringement, and then only if all parties to the proceedings consent to trial by the Comptroller. Even then, the Comptroller has no power to award an injunction or an account of profits, and can thus only order the payment of damages and make a declaration that the patent is valid and has been infringed by the defendant. Moreover, by tradition, the Comptroller only orders, as attorney costs, the payment of a nominal sum in proceedings adjudicated by him. As a result of these limitations, the Comptroller has not been asked to exercise this jurisdiction for over 20 years and, since the provision was first introduced in 1950, there have been only two such cases. Consequently, in the UK, administrative remedies for IPRs can be considered to be non existent as a practical matter. Nevertheless, the Comptroller does have power to adjudicate upon an application for a declaration of non infringement of a patent. This is a concurrent jurisdiction with that of the courts entitled to hear patent infringement proceedings and an application for such a declaration can be combined with an application for revocation of the patent. In such proceedings for a declaration of non infringement (whether brought before the Comptroller or a court), the applicant has the onus of proving that his article/process does not infringe a valid claim of the patent, whereas in infringement proceedings as such, it is the patentee which has the onus of proof that the defendant has carried out an act of patent infringement.

(a) Judicial measures

(1) Under the Common Law and the statutes governing the powers of the courts, those High Courts and county courts (or similar in Scotland) which have power to adjudicate upon enforcement of IPRs can take provisional measures before full trial on the merits of a case, including the grant of interim or preliminary (called “interlocutory”) injunctions (in Scotland called “interim interdicts”). (2)Each of the UK courts having jurisdiction over enforcement of IPRs may also grant relief of the type known as an Anton Piller order after the case in which this relief was first made, (in Scotland the equivalent being an order under section 1 of the Administration of justice (Scotland) Act 1972). 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 solicitor to search for and take into custody any documents 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 IPR and is required to make an affidavit disclosing the source of the articles seized under the order and the destinations of such articles which have already left the premises. (3)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 the bank accounts, and other assets of the defendant pending review of these by the court. This type of relief is normally made after judgment in order to preserve assets for payment of damages awarded, but in principle it is available at any stage of civil proceedings. The Scottish equivalent is an arrestment on the dependence, such an arrestment prevents a third party holding moveable property for the defender and from parting with that property pending the outcome of proceedings. The defender is also prevented from dealing with his inheritable property to a pursuers prejudice pending such outcome by an inhibition on the dependence. Arrestment and inhibition on the dependence are competent where a pecuniary remedy is sought and are protective measures to secure the effectiveness of that remedy. (4)A further provisional measure, rarely applied, is the issue of the writ ne exeat regno (unknown in Scotland). Under this, a party is forbidden to leave the country until further order of 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. (5)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 highly 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. However, as it is customary for IPR enforcement cases to proceed in two stages, first a judgment on liability and subsequently an assessment of damages, this provisional type of relief is rare in IPR enforcement cases. In Scotland an interim decree may be obtained where, for example, the pleadings disclose no stateable defence to part of a pursuers claim.

In cases of exceptional urgency, a court (in England and Wales, and in Northern Ireland) 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 irremedial harm. For example, such relief will be ordered to restrain a threatened immediate publication of confidential information, or where an article infringing an IPR is about to be displayed at an exhibition. However, any such injunction is granted for a matter of days only, that is it is granted only for the immediate protection of the plaintiff. The plaintiff 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 normal grounds for seeking an interlocutory injunction as explained in Answer 10 above. In that Answer, reference was also made to other types of provisional relief. These are 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. However, in each case, the order has only limited and temporary effect until the parties can return to the court for re assessment of the position on an inter partes basis. In Scotland, the position is rather different since it is the norm, rather than the exception, for provisional relief (by way of an interim interdict) to be awarded inaudita altera parte, and such interdict then remains in force until the defendant takes the initiative of applying to the court for that relief to be discharged. Also, arrestment and inhibition on the dependence are likewise awarded ex parte.

Provisional relief is sought at an early stage in normal litigation. In the High Court of England and Wales, this is commenced by service of a writ upon each defendant, together with (or followed shortly afterwards by) a formal “Statement of Claim”. An application for any provisional relief is made by “Notice of Motion” to the court, accompanied by supporting evidence in the form of sworn affidavits. There are no time limits for this, but provisional relief will be refused if it is judged that the plaintiff has unduly delayed making application therefor. In urgent cases, it is permissible to issue such notice of motion even before the issue and/or service of the writ upon giving to the court an undertaking to issue and serve the same forthwith, and to serve the affidavits, as yet unsworn. The Notice of Motion usually names a date for a court hearing a few days later, but the initial hearing will normally be one to set a timetable for the submission of affidavit evidence in answer by the defendant, with time for affidavit evidence in reply before a full hearing on the application for provisional relief is held. Again, these periods can be made quite short if the court sees that the matter should be decided as a matter of urgency. On the initial timetable hearing, it is common for the plaintiff to seek undertakings from the defendant not to continue with the acts complained of pending the full hearing but, if no such undertaking is offered, the plaintiff has the opportunity to ask the court to impose an interlocutory injunction meanwhile. However, a court is reluctant to do this except in a clear case of IPR infringement. Thus, a defendant will normally be given a time which the court judges sufficient to enable him to show cause why it would not be appropriate to award provisional relief against him before a full trial on the merits of the case. If the court refuses to grant provisional relief, it may nevertheless order that the full trial hearing should be held at an early date with, if necessary, a shortening of the normal time limits for the pre trial procedures, such as filing a defence, giving discovery of relevant documents and pre trial exchange of statements in writing of the evidence to be presented at the trial. The procedure in Northern Ireland is broadly similar to that in England and Wales. However, in Scotland, interim interdict is usually sought in the writ commencing the proceedings. It is frequently granted on the basis of the averments of the pursuer in that writ and in advance of service on the defender. Interim interdict is however granted at the discretion of the court and is dependent on averments in the writ sufficient to show title and interest to sue and a cogent need for interim interdict. In exercising its discretion the court will have regard to the balance of convenience as between the parties. Where interim interdict has been granted it is open to the defender to seek recall at any time. Interim interdict may, in the discretion of the court, be granted or refused only if caution is found. Interim interdict is obtained at the risk of the pursuer and a defender who suffers loss as a result of an interim interdict wrongfully obtained will be entitled to damages. It is open to any person apprehensive that interim interdict may be sought against him to lodge in court a caveat. This may relate to interim interdict proceedings in general or may be in respect of some specific matter. Where a caveat has been lodged no interim interdict within the terms of the caveat may be pronounced without the person being given the opportunity to make representations to the court. A caveat remains in force for 12 months but is renewable. Arrestment and inhibition on the dependence are competent where a pecuniary remedy is sought. Warrant to arrest on the dependence is usually obtained at the commencement of proceedings along with warrant to serve the writ upon the defender. Where arrestment is effected before service of the writ the arrestment will fall unless such service is effected within 20 days of the arrestment (42 days in the case of actions under £1,500). Warrant to inhibit on the dependence may be granted only by the Court of Session. In relation to proceedings in that court it is obtained upon presentation of the writ commencing the proceedings but unlike arrestment on the dependence, it cannot be effected prior to the service of the writ. Arrestment and inhibition on the dependence will normally be recalled on caution being found but may be recalled without caution or consignation where the use of such diligence is disproportionate to the pursuers interest. The expenses of arrestment or inhibition on the dependence cannot be recovered as part of the process.

(1) Describe the provisions governing the length and cost of proceedings. Under the laws of the United Kingdom there are no provisions which 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 will be appointed. Because provisional relief is necessarily requested because of the threat of imminent damage to the interests of the plaintiff, the court will expedite the timetable in an appropriate way according to the perceived need for immediate relief. In a very urgent case - for example, as regards a threatened breach of copyright in a newspaper about to be published - the court will hear the representatives of a plaintiff at very short notice, even in the middle of the night at the home of the “duty judge”. The appeal courts will likewise act with great expedition when it is perceived that this is necessary in the public interest. As indicated in Answer 8 above, the costs of proceedings are governed only by the sums of money which a party to litigation is able and chooses to spend on the case. A successful party can expect to recover a large proportion, though not all, of its attorney costs and disbursements (see Answer 5(2) above, the normal rules applying also 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 litigation, that is after the full substantive trial, though the court can make an order for “costs to be taxed and paid forthwith”. (2) Provide any available data on the actual duration of proceedings and their cost. There is no such data available. This is not surprising bearing in mind the wide range of IPR enforcement proceedings which come before the court, as discussed in Answer 8(2) above.

[Answer 8: (1) Describe provisions governing the length and cost of proceedings. There are no such provisions in the laws of the United Kingdom. The length of proceedings for enforcement of IPRs is under the control of the court before which those proceedings are brought. The court in general does not keep to a pre set timetable. Rather 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 an order requiring the opposing party to take some step within a defined period, failing which the litigation should automatically be determined against it. 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. In England and Wales (and also in Northern Ireland), there is first a formal exchange of pleadings which sets out the allegations made against a party and the defences which 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 allegations are to succeed at the eventual trial. A party may at this time make admissions which reduces the issues in contention and there then follows the discovery of documents which relate to the determination of those live issues, for which see Answer 3 above. When these pre trial procedures are judged to be complete, the case may be “set down” for trial. Usually in IPR enforcement litigation, the parties request a fixed date for that trial and when this takes place will depend on the estimated length of trial and the slots available in the court diary. Before the trial, it is now customary for the parties to be required to exchange written statements of the evidence to be presented at the trial by at least any expert witnesses to be called, and probably also of witnesses of fact and also for the advocates to submit a written summary of their intended submissions. These procedures (applicable in England, Wales and Northern Ireland) have been designed to reduce the length of the eventual substantive trial which is largely an oral procedure with examination, and cross examination of witnesses who testify to the court on the basis of their personal experiences. Their effectiveness depends greatly upon the attitude adopted by both parties. This will depend upon the costs and time which a party may feel is necessary to expend if its case is to be put before the court to the extent thought desirable for success—of course assuming that a party can afford to do so. Suffice it to say, that measures are available for a speedy and relatively inexpensive resolution of proceedings, but litigating parties often feel that their position will be prejudiced if they take advantage of them. This is because the taking of steps to curtail expense and limit the time taken will usually be seen as carrying an unacceptable risk of weakening the party's case to an extent which ought not to be taken having regard to the sums of money at stake, and the likelihood of an injunction being granted (or of not being granted as the case may be), which might be avoided by a fuller presentation of a party's case. In Scotland, the object of the system of written pleadings is to give notice to the court and to opponents of the facts and propositions of law on which the party relies in support of his claim or defence. The pleadings define the issues and are the basis upon which procedural questions such as the ambit of any commission or diligence for the recovery of evidence are determined. The pleadings do not specify the evidence upon which a party proposes to rely to establish the facts averred and in general parties are not required to exchange written statements of the evidence to be presented by expert or other witnesses. However, since the court may refuse to award expenses in relation to a witness whose evidence is not in issue parties are encouraged to consider and agree what can agreed. Such matters are then incorporated in a joint minute of admissions in which parties accept for the purpose of the proceedings the facts set out in the minute as true. In proceedings under the Patents Act 1949 and 1977 the court may at a pre proof hearing order a meeting of experts for the purpose of producing a joint report on the general state of the art or order each party to make available to every other party a copy of any precognitions, or reports, of skilled witnesses on any matter which is not the subject of a joint report. In all types of cases, the emphasis is on allowing a defendant sufficient time properly to prepare and present the defence he wishes to put forward, unless the court sees a particular argument as so unlikely to be accepted by the court that it orders at a pre trial stage that such plea should be removed from the formal defence pleading. Nevertheless, having said this, the courts are fully aware of the need to make justice as cheap as possible and the rules of court for England and Wales have recently been revised, with further revisions in prospect, aimed at simplifying the trial procedures in this jurisdiction but consistent with the overriding interests of natural justice. It can be expected that these will be followed, at least in Northern Ireland. (2) Provide any available data on the actual duration of proceedings and their cost. Such data is not available and, even if it were, would be meaningless. This is because proceedings for enforcement of IPRs can have a very wide spectrum of complexity. A defendant may seek to challenge each and every fact alleged against him, or it may make admissions limiting the matters to be decided to a very few points which may be matters of law to be decided upon a statement of underlying facts agreed between the parties. The rhetorical question: “How long is a piece of string?” is particularly apposite here. A simple case may occupy a court for perhaps only half a day, whereas the substantive trial of an action for patent infringement has been known to occupy the English court for six months. On the one hand, there may be a simple and blatant case of trademark infringement to which there can be no defence. Such an action may be decided very quickly upon an application for summary judgment because no arguable defence is seen. If the court agrees, judgment can be given within a matter of weeks from the issue of the writ. However, in such a case, the probability is that the defendant will have voluntarily submitted to judgment in order to avoid the costs of a trial. In such a submission, the defendant can consent to an injunction being given against him, and the court will normally make any order which the parties, by consent, ask to be made, provided only that such an order would not go beyond the powers of the court. However, instead of a formal injunction, the defendant can give a voluntary undertaking to the court to cease and desist from the alleged infringing activity. Such an undertaking—because it is given to the court— has the same effect as an injunction, though perhaps not so damaging to the public image of the defendant. This, however, does not reflect Scottish practise. On the other hand, the enforcement of an IPR may involve very complicated issues of both fact and law, both on whether the IPR has been infringed and whether the IPR was validly granted. Such a dispute can occupy the court for several weeks of actual trial, one such case in 1979 lasting six months, with several years taken over the pre trial preparation. Such cases are rare, but they do exist. Any estimate of costs can only be anecdotal. However, it is unlikely that a contested case in the High Court could be taken to a conclusion for under £50,000 (mainly in attorney costs and expenses), except in a very simple case. Where the trial lasts more than three weeks, the costs of the proceedings can be expected to exceed £1,000,000 for each party, and considerably more if experiments are conducted by the parties for the purpose of providing evidence to be assessed by the court, or the case lasts longer than 15 days of trial in court. The costs of litigation in England and Wales (and also in Northern Ireland) are undoubtedly increased by the need to employ a team consisting of a barrister (advocate) to present the case orally before the court and a solicitor (to prepare the pleadings and be generally responsible for the preparation of the case). In an important IPR enforcement case (which is usually the position), it will be customary to engage both a senior barrister who is a Queen's Counsel, to present the case in court, assisted by a junior counsel. Also, it will be usual in patent litigation at least for the legal team to be augmented by a patent agent/attorney to assist in the preparation of the case for trial as regards its technological aspects. Nevertheless, the Patents County Court, instituted in 1990 as an alternative forum for resolution of patent and design litigation, does provide a means whereby a case can be conducted (including appearance in court) by a single person who can be a patent agent/attorney, a solicitor or a barrister. Thus, if financial means are limited, a case can be conducted in this forum at reduced cost, though only at the expense of reducing the legal effectiveness of the party's representation which may perhaps be by a relatively inexperienced person whose fees will be less. In short, the duration and costs of a case are governed only by the time and money which a party judges that it is necessary or desirable to expend in order to be successful in the litigation, and the ability to fund that expenditure. The complexity of the case is the other major factor. In recent years insurance schemes have become available under which a rightholder can insure against the costs of litigation to enforce his IPR; and also for potential defendants to take out insurance to fund a defence of litigation brought against them. It must also be added that a natural person without financial resources, or having only very limited financial resources, can be granted “legal aid” whereby litigation for enforcement of IPRs can be funded out of central funds. Such “legal aid” dependant on financial resources is calculated at the commencement of proceedings. Where a legally aided litigant is successful property recovered or preserved will go first to meet his outstanding liability to the legal aid funded.]

[Answer 5.2: (2) damages, including recovery of profits, and expenses, including attorney's fees; Once a court has found infringement of an IPR, the plaintiff is entitled automatically to an award of damages, unless the infringer (other than in instances of infringement of a registered trademark) can show that he was not aware of the existence of the IPR and had no reason to believe that such might exist. Normally, the court then orders the holding of a separate enquiry to assess the amount of those damages. Damages as such (though see sub answer (4) below) are assessed to compensate the rightholder for the loss which it has suffered as a result of the infringing acts which have been established. Such loss is not (by a recent decision of the English Patents Court) limited to the loss suffered directly by the rightholder but extends to any loss which can said to have been caused by, or which resulted from, the infringing act committed by the defendants. Thus, loss of sales of associated equipment, and from contracts for repairs and maintenance, have a sufficient causal connection to the infringing act as to be considered to flow directly from that infringement. The rightholder may thus be compensated for such associated losses. However, the rightholder will only be able to obtain compensation in the form of the profits lost by him if it can demonstrate to the court that,“but for” the infringing act, it would have made those profits. Where this cannot (as is the usual case) be shown, the court will assess the direct damage suffered by the rightholder by the infringing acts on the basis of a reasonable royalty; and this will be so where the rightholder has granted licences to third parties on terms which can be seen to indicate the level of such a royalty. In the case of infringement of copyright (or related right), or of an unregistered design right, the court can also award “additional damages” in cases of perceived flagrant infringement or where undue benefit has accrued to the infringer. As to expenses, and attorney's fees, it is a rule within the legal systems of England, Wales and Northern Ireland that the court makes an order in favour of the successful party that the losing party pays its costs (expenses in Scotland) “to be taxed if not otherwise agreed”. Under such an 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, such costs are assessed by a Court Taxing Master. However, as a party will normally spend more money on a case than a taxing master will consider reasonable, and as such Master will disallow all claimed costs for which there are not sufficient evidence of how the costs have been incurred and of receipts for expenditure, a successful party will, in actuality, probably recover only about 60% 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. An order for indemnity costs is mandatory if a defendant unsuccessfully challenges the validity of a patent which has previously been upheld in revocation proceedings and a“certificate of validity” has been issued. In Scotland the award of expenses is a matter for the discretion of the courts. The principle upon which the Scottish courts proceed in awarding expenses is that the cost of litigation should fall on the party who has caused the litigation. The general rule for applying this principle is that expenses are awarded in favour of the successful party. Where the application of the general rule would not carry out the principle the court will take account of conduct on the part of the successful party which may have unnecessarily or unreasonably caused or protracted the litigation. An account of expenses is prepared and, in the absence of agreement, taxed by the auditor of court as between party and party or as between solicitor and client. An award of expenses without qualification implies expenses taxed as between party and party. An account will not be taxed on the higher basis, i.e. as between solicitor and client unless expressly awarded by the court. Where the validity of a patent is unsuccessfully challenged that position is reversed by a legislative provision [Section 65 of the Patents Act 1977], i.e. it is provided that a party shall be entitled to expenses as between solicitor and client unless the court otherwise directs.]

[Answer 8.2: (2) Provide any available data on the actual duration of proceedings and their cost. Such data is not available and, even if it were, would be meaningless. This is because proceedings for enforcement of IPRs can have a very wide spectrum of complexity. A defendant may seek to challenge each and every fact alleged against him, or it may make admissions limiting the matters to be decided to a very few points which may be matters of law to be decided upon a statement of underlying facts agreed between the parties. The rhetorical question: “How long is a piece of string?” is particularly apposite here. A simple case may occupy a court for perhaps only half a day, whereas the substantive trial of an action for patent infringement has been known to occupy the English court for six months. On the one hand, there may be a simple and blatant case of trademark infringement to which there can be no defence. Such an action may be decided very quickly upon an application for summary judgment because no arguable defence is seen. If the court agrees, judgment can be given within a matter of weeks from the issue of the writ. However, in such a case, the probability is that the defendant will have voluntarily submitted to judgment in order to avoid the costs of a trial. In such a submission, the defendant can consent to an injunction being given against him, and the court will normally make any order which the parties, by consent, ask to be made, provided only that such an order would not go beyond the powers of the court. However, instead of a formal injunction, the defendant can give a voluntary undertaking to the court to cease and desist from the alleged infringing activity. Such an undertaking—because it is given to the court— has the same effect as an injunction, though perhaps not so damaging to the public image of the defendant. This, however, does not reflect Scottish practise. On the other hand, the enforcement of an IPR may involve very complicated issues of both fact and law, both on whether the IPR has been infringed and whether the IPR was validly granted. Such a dispute can occupy the court for several weeks of actual trial, one such case in 1979 lasting six months, with several years taken over the pre trial preparation. Such cases are rare, but they do exist. Any estimate of costs can only be anecdotal. However, it is unlikely that a contested case in the High Court could be taken to a conclusion for under £50,000 (mainly in attorney costs and expenses), except in a very simple case. Where the trial lasts more than three weeks, the costs of the proceedings can be expected to exceed £1,000,000 for each party, and considerably more if experiments are conducted by the parties for the purpose of providing evidence to be assessed by the court, or the case lasts longer than 15 days of trial in court. The costs of litigation in England and Wales (and also in Northern Ireland) are undoubtedly increased by the need to employ a team consisting of a barrister (advocate) to present the case orally before the court and a solicitor (to prepare the pleadings and be generally responsible for the preparation of the case). In an important IPR enforcement case (which is usually the position), it will be customary to engage both a senior barrister who is a Queen's Counsel, to present the case in court, assisted by a junior counsel. Also, it will be usual in patent litigation at least for the legal team to be augmented by a patent agent/attorney to assist in the preparation of the case for trial as regards its technological aspects. Nevertheless, the Patents County Court, instituted in 1990 as an alternative forum for resolution of patent and design litigation, does provide a means whereby a case can be conducted (including appearance in court) by a single person who can be a patent agent/attorney, a solicitor or a barrister. Thus, if financial means are limited, a case can be conducted in this forum at reduced cost, though only at the expense of reducing the legal effectiveness of the party's representation which may perhaps be by a relatively inexperienced person whose fees will be less. In short, the duration and costs of a case are governed only by the time and money which a party judges that it is necessary or desirable to expend in order to be successful in the litigation, and the ability to fund that expenditure. The complexity of the case is the other major factor. In recent years insurance schemes have become available under which a rightholder can insure against the costs of litigation to enforce his IPR; and also for potential defendants to take out insurance to fund a defence of litigation brought against them. It must also be added that a natural person without financial resources, or having only very limited financial resources, can be granted “legal aid” whereby litigation for enforcement of IPRs can be funded out of central funds. Such “legal aid” dependant on financial resources is calculated at the commencement of proceedings. Where a legally aided litigant is successful property recovered or preserved will go first to meet his outstanding liability to the legal aid funded.] 

(b) Administrative measures

There are no provisions in the laws of the United Kingdom whereby provisional relief can be given by an administrative body, save as regards “Border Measures” discussed in Answers 15-19 below.

[Answer 15: (1)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). The Customs and Excise authorities have general powers to impound goods entering the United Kingdom (other than perhaps from other Member States of the European Economic Area (EEA)) where these authorities have reason to believe that the import of such goods may contravene provisions of the law. Most such actions are concerned with restricting the entry into the United Kingdom of banned substances (such as narcotics, weapons, pornographic material and certain animals and plants). In relation to infringement of IPRs, the only specific provisions are in respect of counterfeit trademarked and pirated goods. These mainly arise under European Council Regulation (EC) No. 3295/94. Under this, “counterfeit goods” are goods bearing a trademark which is essentially identical to that registered and which has been applied without authorization from the rightholder or its licensees; and “pirated goods” are unauthorized copies of copyright works, including sound recordings and films, with this definition extending beyond that in the footnote to Article 51 of the TRIPS Agreement by including also unauthorized copies of design rights and of rights in performances. In respect of counterfeit trademarked goods, these provisions are extended to cover packaging materials, inserts and the like, whether or not presented separately; and, in respect of both trademarked and pirated copyright goods, these provisions are extended to cover moulds and matrices specifically designed or adapted for the manufacture of such goods. Besides the powers under this EU Regulation, which only came into force on 1 July 1995, powers under specific statutes of the United Kingdom have existed for several years under the trademark and copyright statutes (in the latter case in respect of published literary, dramatic and musical works and also in respect of sound recordings and films) providing a procedure whereby a trademark proprietor or a copyright owner may give notice to the customs authorities of an impending importation of goods (within the above specified types) which infringe its rights asking that such goods be treated as prohibited goods and thus be detained for inspection and then, if confirmed to be infringing goods, be declared by the customs authorities to be forfeited. Unless this declaration is successfully challenged, the goods will eventually be destroyed by the customs authorities. These “domestic provisions” require the provision of information as to the time and place of expected arrival of infringing goods and thus now have little value in view of the wider powers more recently provided under the EU Regulation; and, anyway, have largely been rendered ineffective because the domestic provisions now only apply to imports falling outside the provisions of the EU Regulation. (2)Specify, together with relevant criteria, any imports excluded from the application of such procedures (such as goods from another member state of a customs union, goods in transit or de minimis imports). Do the procedures apply to imports of goods put on the market in another country by or with the consent of the rightholder and to goods destined for exportation? The provisions summarized in (1) above do not apply to goods which are already in “free circulation” within the European Union, that is goods which have originated within the territory of this customs union or have been imported into this territory with all customs duty and relevant import taxes duly paid. If this exception does not apply, then goods destined for exportation and “goods in transit” are included within the provisions. However, excluded are goods of a non commercial nature contained in a traveller's personal luggage within the limit for relief from customs duty, and (in the case of the domestic provisions referred to in (1) above) goods intended for the private and domestic use of the person importing them. The EU Regulation, however, does not apply to importation of goods put on the market by or with the consent of the rightholder, even if no consent has been given to their importation into the EU or even if the goods have been manufactured contrary to the terms of a licence from the rightholder. However, the “domestic provisions” do not have this limitation and, therefore, if the goods have come from outside the European Union or have not been entered into free circulation within that Union, then these domestic provisions do apply to the import of goods put on the market in another (non EU) country by or with the consent of the rightholder, though only if the rightholder has made it clear that consent has not been given for importation of the goods into the United Kingdom, but, in such an instance, it will probably be difficult to persuade the customs authorities that the goods are infringing goods within the terms of the domestic provisions.]

[Answer 16: The provisions of European Union Council Regulation (EC) No. 3295/94 apply automatically within the United Kingdom and are believed to comply with the obligations of Articles 51 57 of the TRIPS Agreement. Under this Regulation, application may be made to the Customs Authorities (the Commissioners of Customs and Excise) requesting them to detain goods which the applicant has reason to believe will be counterfeit or pirated goods. A fee for this administrative monitoring service is payable which provides for the first month of such monitoring, though extension fees, also on a monthly basis, can be paid. With these fees, the applicant is required to provide an indemnity to pay compensation for any unlawful detention of the goods, and the customs authorities can require security to be given against any claim for such compensation. The applicant is required to provide proof of the ownership of the right asserted and, if necessary, an authorization from the rightholder to act against the importation of counterfeit or pirated goods. If the application is found acceptable, the authorities will so notify the applicant and commence a monitoring service for the period requested, though the application should be filed at least 10 days before the alleged infringing goods are believed to be imported or exported. Under the Regulation, the customs authorities also have powers to detain, of their own initiative, goods which they suspect may be counterfeit or pirated, even in the absence of a notice being in force as mentioned above. When this is done, the rightholder is notified, and then has three working days to institute a notice that the goods should be regarded as counterfeit or pirated and should thus be made subject to a forfeiture procedure. If the customs authorities do detain any goods under either of these procedures, the person who filed the application is informed and the goods are detained (or their free circulation suspended) for 10 working days, during which both the rightholder and the importer are entitled to inspect the goods. If within that time the rightholder, or someone authorized to act on his behalf, takes steps to show that these detained goods are in fact counterfeit or pirated, the customs authorities declare the goods to be forfeited. If this forfeiture decision is challenged, the customs authorities are required to commence condemnation proceedings before a court, and these are at the expense of the applicant seeking that forfeiture. If the condemnation proceedings fail, the goods are released into free circulation. If they succeed, the goods are then destroyed. Re export is not permitted. If the goods are shown not to be counterfeit or pirated, the rightholder will be subject to a claim by the importer for damages for the unlawful detention of the goods. The above mentioned indemnity takes effect in respect of any such claim as well as for the costs of the condemnation proceedings.]

[Answer 17: (1)Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost. The “domestic provisions” referred to in Answer 16 above have been only used on relatively few occasions, probably because of the need to give notice of the time and location of the expected arrival of the unauthorized trademarked or copyright infringing goods. EU Regulation No. 3295/94 only came into force on 1 July 1995 and so there has been as yet insufficient time to gauge the effectiveness of its provisions. However, it is understood that the application procedure is currently being used to a significant extent. (2)How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation? Upon detention of goods pursuant to a application for monitoring, 10 working days are allowed for inspection of the goods and provision of a written opinion as to the counterfeit or pirated nature of the detained goods; this period can be extended by a further 10 working days. In the case of the customs authorities detaining goods of their own initiative, a period of 3 days is allowed for an application to be made by, or on behalf of, the rightholder for the detention of these goods. The 10 day periods then commence. At the end of the periods allowed, and on the conclusion of any proceedings commenced during such period, the goods are either released or declared forfeited, and may then be made subject to condemnation proceedings as explained in Answer 16 above.]

[Answer 18: (1)Are competent authorities required to act upon their own initiative and, if so, in what circumstances? The customs authorities are not “required” to act upon their own initiative, but (as explained in Answer 16 above) they have the power so to do. This will be done when the authorities themselves suspect that certain goods are either counterfeit or pirated. (2) Are there any special provisions applicable to ex officio action? Yes, as explained in Answer 16 above, when the authorities take action ex officio, notice is given to the rightholder and the goods will be released if an application for detention is not made within 3 working days thereafter.

[Answer 19: See Answer 16.]

(1)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). The Customs and Excise authorities have general powers to impound goods entering the United Kingdom (other than perhaps from other Member States of the European Economic Area (EEA)) where these authorities have reason to believe that the import of such goods may contravene provisions of the law. Most such actions are concerned with restricting the entry into the United Kingdom of banned substances (such as narcotics, weapons, pornographic material and certain animals and plants). In relation to infringement of IPRs, the only specific provisions are in respect of counterfeit trademarked and pirated goods. These mainly arise under European Council Regulation (EC) No. 3295/94. Under this, “counterfeit goods” are goods bearing a trademark which is essentially identical to that registered and which has been applied without authorization from the rightholder or its licensees; and “pirated goods” are unauthorized copies of copyright works, including sound recordings and films, with this definition extending beyond that in the footnote to Article 51 of the TRIPS Agreement by including also unauthorized copies of design rights and of rights in performances. In respect of counterfeit trademarked goods, these provisions are extended to cover packaging materials, inserts and the like, whether or not presented separately; and, in respect of both trademarked and pirated copyright goods, these provisions are extended to cover moulds and matrices specifically designed or adapted for the manufacture of such goods. Besides the powers under this EU Regulation, which only came into force on 1 July 1995, powers under specific statutes of the United Kingdom have existed for several years under the trademark and copyright statutes (in the latter case in respect of published literary, dramatic and musical works and also in respect of sound recordings and films) providing a procedure whereby a trademark proprietor or a copyright owner may give notice to the customs authorities of an impending importation of goods (within the above specified types) which infringe its rights asking that such goods be treated as prohibited goods and thus be detained for inspection and then, if confirmed to be infringing goods, be declared by the customs authorities to be forfeited. Unless this declaration is successfully challenged, the goods will eventually be destroyed by the customs authorities. These “domestic provisions” require the provision of information as to the time and place of expected arrival of infringing goods and thus now have little value in view of the wider powers more recently provided under the EU Regulation; and, anyway, have largely been rendered ineffective because the domestic provisions now only apply to imports falling outside the provisions of the EU Regulation. (2)Specify, together with relevant criteria, any imports excluded from the application of such procedures (such as goods from another member state of a customs union, goods in transit or de minimis imports). Do the procedures apply to imports of goods put on the market in another country by or with the consent of the rightholder and to goods destined for exportation? The provisions summarized in (1) above do not apply to goods which are already in “free circulation” within the European Union, that is goods which have originated within the territory of this customs union or have been imported into this territory with all customs duty and relevant import taxes duly paid. If this exception does not apply, then goods destined for exportation and “goods in transit” are included within the provisions. However, excluded are goods of a non commercial nature contained in a traveller's personal luggage within the limit for relief from customs duty, and (in the case of the domestic provisions referred to in (1) above) goods intended for the private and domestic use of the person importing them. The EU Regulation, however, does not apply to importation of goods put on the market by or with the consent of the rightholder, even if no consent has been given to their importation into the EU or even if the goods have been manufactured contrary to the terms of a licence from the rightholder. However, the “domestic provisions” do not have this limitation and, therefore, if the goods have come from outside the European Union or have not been entered into free circulation within that Union, then these domestic provisions do apply to the import of goods put on the market in another (non EU) country by or with the consent of the rightholder, though only if the rightholder has made it clear that consent has not been given for importation of the goods into the United Kingdom, but, in such an instance, it will probably be difficult to persuade the customs authorities that the goods are infringing goods within the terms of the domestic provisions.

The provisions of European Union Council Regulation (EC) No. 3295/94 apply automatically within the United Kingdom and are believed to comply with the obligations of Articles 51 57 of the TRIPS Agreement. Under this Regulation, application may be made to the Customs Authorities (the Commissioners of Customs and Excise) requesting them to detain goods which the applicant has reason to believe will be counterfeit or pirated goods. A fee for this administrative monitoring service is payable which provides for the first month of such monitoring, though extension fees, also on a monthly basis, can be paid. With these fees, the applicant is required to provide an indemnity to pay compensation for any unlawful detention of the goods, and the customs authorities can require security to be given against any claim for such compensation. The applicant is required to provide proof of the ownership of the right asserted and, if necessary, an authorization from the rightholder to act against the importation of counterfeit or pirated goods. If the application is found acceptable, the authorities will so notify the applicant and commence a monitoring service for the period requested, though the application should be filed at least 10 days before the alleged infringing goods are believed to be imported or exported. Under the Regulation, the customs authorities also have powers to detain, of their own initiative, goods which they suspect may be counterfeit or pirated, even in the absence of a notice being in force as mentioned above. When this is done, the rightholder is notified, and then has three working days to institute a notice that the goods should be regarded as counterfeit or pirated and should thus be made subject to a forfeiture procedure. If the customs authorities do detain any goods under either of these procedures, the person who filed the application is informed and the goods are detained (or their free circulation suspended) for 10 working days, during which both the rightholder and the importer are entitled to inspect the goods. If within that time the rightholder, or someone authorized to act on his behalf, takes steps to show that these detained goods are in fact counterfeit or pirated, the customs authorities declare the goods to be forfeited. If this forfeiture decision is challenged, the customs authorities are required to commence condemnation proceedings before a court, and these are at the expense of the applicant seeking that forfeiture. If the condemnation proceedings fail, the goods are released into free circulation. If they succeed, the goods are then destroyed. Re export is not permitted. If the goods are shown not to be counterfeit or pirated, the rightholder will be subject to a claim by the importer for damages for the unlawful detention of the goods. The above mentioned indemnity takes effect in respect of any such claim as well as for the costs of the condemnation proceedings.

(1)Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost. The “domestic provisions” referred to in Answer 16 above have been only used on relatively few occasions, probably because of the need to give notice of the time and location of the expected arrival of the unauthorized trademarked or copyright infringing goods. EU Regulation No. 3295/94 only came into force on 1 July 1995 and so there has been as yet insufficient time to gauge the effectiveness of its provisions. However, it is understood that the application procedure is currently being used to a significant extent. (2)How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation? Upon detention of goods pursuant to a application for monitoring, 10 working days are allowed for inspection of the goods and provision of a written opinion as to the counterfeit or pirated nature of the detained goods; this period can be extended by a further 10 working days. In the case of the customs authorities detaining goods of their own initiative, a period of 3 days is allowed for an application to be made by, or on behalf of, the rightholder for the detention of these goods. The 10 day periods then commence. At the end of the periods allowed, and on the conclusion of any proceedings commenced during such period, the goods are either released or declared forfeited, and may then be made subject to condemnation proceedings as explained in Answer 16 above.

[Answer 16: The provisions of European Union Council Regulation (EC) No. 3295/94 apply automatically within the United Kingdom and are believed to comply with the obligations of Articles 51 57 of the TRIPS Agreement. Under this Regulation, application may be made to the Customs Authorities (the Commissioners of Customs and Excise) requesting them to detain goods which the applicant has reason to believe will be counterfeit or pirated goods. A fee for this administrative monitoring service is payable which provides for the first month of such monitoring, though extension fees, also on a monthly basis, can be paid. With these fees, the applicant is required to provide an indemnity to pay compensation for any unlawful detention of the goods, and the customs authorities can require security to be given against any claim for such compensation. The applicant is required to provide proof of the ownership of the right asserted and, if necessary, an authorization from the rightholder to act against the importation of counterfeit or pirated goods. If the application is found acceptable, the authorities will so notify the applicant and commence a monitoring service for the period requested, though the application should be filed at least 10 days before the alleged infringing goods are believed to be imported or exported. Under the Regulation, the customs authorities also have powers to detain, of their own initiative, goods which they suspect may be counterfeit or pirated, even in the absence of a notice being in force as mentioned above. When this is done, the rightholder is notified, and then has three working days to institute a notice that the goods should be regarded as counterfeit or pirated and should thus be made subject to a forfeiture procedure. If the customs authorities do detain any goods under either of these procedures, the person who filed the application is informed and the goods are detained (or their free circulation suspended) for 10 working days, during which both the rightholder and the importer are entitled to inspect the goods. If within that time the rightholder, or someone authorized to act on his behalf, takes steps to show that these detained goods are in fact counterfeit or pirated, the customs authorities declare the goods to be forfeited. If this forfeiture decision is challenged, the customs authorities are required to commence condemnation proceedings before a court, and these are at the expense of the applicant seeking that forfeiture. If the condemnation proceedings fail, the goods are released into free circulation. If they succeed, the goods are then destroyed. Re export is not permitted. If the goods are shown not to be counterfeit or pirated, the rightholder will be subject to a claim by the importer for damages for the unlawful detention of the goods. The above mentioned indemnity takes effect in respect of any such claim as well as for the costs of the condemnation proceedings.]

[Answer 17: (1)Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost. The “domestic provisions” referred to in Answer 16 above have been only used on relatively few occasions, probably because of the need to give notice of the time and location of the expected arrival of the unauthorized trademarked or copyright infringing goods. EU Regulation No. 3295/94 only came into force on 1 July 1995 and so there has been as yet insufficient time to gauge the effectiveness of its provisions. However, it is understood that the application procedure is currently being used to a significant extent. (2)How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation? Upon detention of goods pursuant to a application for monitoring, 10 working days are allowed for inspection of the goods and provision of a written opinion as to the counterfeit or pirated nature of the detained goods; this period can be extended by a further 10 working days. In the case of the customs authorities detaining goods of their own initiative, a period of 3 days is allowed for an application to be made by, or on behalf of, the rightholder for the detention of these goods. The 10 day periods then commence. At the end of the periods allowed, and on the conclusion of any proceedings commenced during such period, the goods are either released or declared forfeited, and may then be made subject to condemnation proceedings as explained in Answer 16 above.]

(1)Are competent authorities required to act upon their own initiative and, if so, in what circumstances? The customs authorities are not “required” to act upon their own initiative, but (as explained in Answer 16 above) they have the power so to do. This will be done when the authorities themselves suspect that certain goods are either counterfeit or pirated. (2) Are there any special provisions applicable to ex officio action? Yes, as explained in Answer 16 above, when the authorities take action ex officio, notice is given to the rightholder and the goods will be released if an application for detention is not made within 3 working days thereafter.

[Answer 16: The provisions of European Union Council Regulation (EC) No. 3295/94 apply automatically within the United Kingdom and are believed to comply with the obligations of Articles 51 57 of the TRIPS Agreement. Under this Regulation, application may be made to the Customs Authorities (the Commissioners of Customs and Excise) requesting them to detain goods which the applicant has reason to believe will be counterfeit or pirated goods. A fee for this administrative monitoring service is payable which provides for the first month of such monitoring, though extension fees, also on a monthly basis, can be paid. With these fees, the applicant is required to provide an indemnity to pay compensation for any unlawful detention of the goods, and the customs authorities can require security to be given against any claim for such compensation. The applicant is required to provide proof of the ownership of the right asserted and, if necessary, an authorization from the rightholder to act against the importation of counterfeit or pirated goods. If the application is found acceptable, the authorities will so notify the applicant and commence a monitoring service for the period requested, though the application should be filed at least 10 days before the alleged infringing goods are believed to be imported or exported. Under the Regulation, the customs authorities also have powers to detain, of their own initiative, goods which they suspect may be counterfeit or pirated, even in the absence of a notice being in force as mentioned above. When this is done, the rightholder is notified, and then has three working days to institute a notice that the goods should be regarded as counterfeit or pirated and should thus be made subject to a forfeiture procedure. If the customs authorities do detain any goods under either of these procedures, the person who filed the application is informed and the goods are detained (or their free circulation suspended) for 10 working days, during which both the rightholder and the importer are entitled to inspect the goods. If within that time the rightholder, or someone authorized to act on his behalf, takes steps to show that these detained goods are in fact counterfeit or pirated, the customs authorities declare the goods to be forfeited. If this forfeiture decision is challenged, the customs authorities are required to commence condemnation proceedings before a court, and these are at the expense of the applicant seeking that forfeiture. If the condemnation proceedings fail, the goods are released into free circulation. If they succeed, the goods are then destroyed. Re export is not permitted. If the goods are shown not to be counterfeit or pirated, the rightholder will be subject to a claim by the importer for damages for the unlawful detention of the goods. The above mentioned indemnity takes effect in respect of any such claim as well as for the costs of the condemnation proceedings.]

[Answer 17: (1)Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost. The “domestic provisions” referred to in Answer 16 above have been only used on relatively few occasions, probably because of the need to give notice of the time and location of the expected arrival of the unauthorized trademarked or copyright infringing goods. EU Regulation No. 3295/94 only came into force on 1 July 1995 and so there has been as yet insufficient time to gauge the effectiveness of its provisions. However, it is understood that the application procedure is currently being used to a significant extent. (2)How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation? Upon detention of goods pursuant to a application for monitoring, 10 working days are allowed for inspection of the goods and provision of a written opinion as to the counterfeit or pirated nature of the detained goods; this period can be extended by a further 10 working days. In the case of the customs authorities detaining goods of their own initiative, a period of 3 days is allowed for an application to be made by, or on behalf of, the rightholder for the detention of these goods. The 10 day periods then commence. At the end of the periods allowed, and on the conclusion of any proceedings commenced during such period, the goods are either released or declared forfeited, and may then be made subject to condemnation proceedings as explained in Answer 16 above.]

See Answer 16.

[Answer 16: The provisions of European Union Council Regulation (EC) No. 3295/94 apply automatically within the United Kingdom and are believed to comply with the obligations of Articles 51 57 of the TRIPS Agreement. Under this Regulation, application may be made to the Customs Authorities (the Commissioners of Customs and Excise) requesting them to detain goods which the applicant has reason to believe will be counterfeit or pirated goods. A fee for this administrative monitoring service is payable which provides for the first month of such monitoring, though extension fees, also on a monthly basis, can be paid. With these fees, the applicant is required to provide an indemnity to pay compensation for any unlawful detention of the goods, and the customs authorities can require security to be given against any claim for such compensation. The applicant is required to provide proof of the ownership of the right asserted and, if necessary, an authorization from the rightholder to act against the importation of counterfeit or pirated goods. If the application is found acceptable, the authorities will so notify the applicant and commence a monitoring service for the period requested, though the application should be filed at least 10 days before the alleged infringing goods are believed to be imported or exported. Under the Regulation, the customs authorities also have powers to detain, of their own initiative, goods which they suspect may be counterfeit or pirated, even in the absence of a notice being in force as mentioned above. When this is done, the rightholder is notified, and then has three working days to institute a notice that the goods should be regarded as counterfeit or pirated and should thus be made subject to a forfeiture procedure. If the customs authorities do detain any goods under either of these procedures, the person who filed the application is informed and the goods are detained (or their free circulation suspended) for 10 working days, during which both the rightholder and the importer are entitled to inspect the goods. If within that time the rightholder, or someone authorized to act on his behalf, takes steps to show that these detained goods are in fact counterfeit or pirated, the customs authorities declare the goods to be forfeited. If this forfeiture decision is challenged, the customs authorities are required to commence condemnation proceedings before a court, and these are at the expense of the applicant seeking that forfeiture. If the condemnation proceedings fail, the goods are released into free circulation. If they succeed, the goods are then destroyed. Re export is not permitted. If the goods are shown not to be counterfeit or pirated, the rightholder will be subject to a claim by the importer for damages for the unlawful detention of the goods. The above mentioned indemnity takes effect in respect of any such claim as well as for the costs of the condemnation proceedings.]

[Answer 17: (1)Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost. The “domestic provisions” referred to in Answer 16 above have been only used on relatively few occasions, probably because of the need to give notice of the time and location of the expected arrival of the unauthorized trademarked or copyright infringing goods. EU Regulation No. 3295/94 only came into force on 1 July 1995 and so there has been as yet insufficient time to gauge the effectiveness of its provisions. However, it is understood that the application procedure is currently being used to a significant extent. (2)How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation? Upon detention of goods pursuant to a application for monitoring, 10 working days are allowed for inspection of the goods and provision of a written opinion as to the counterfeit or pirated nature of the detained goods; this period can be extended by a further 10 working days. In the case of the customs authorities detaining goods of their own initiative, a period of 3 days is allowed for an application to be made by, or on behalf of, the rightholder for the detention of these goods. The 10 day periods then commence. At the end of the periods allowed, and on the conclusion of any proceedings commenced during such period, the goods are either released or declared forfeited, and may then be made subject to condemnation proceedings as explained in Answer 16 above.]

In the United Kingdom, criminal law (in England and Wales, and also in Northern Ireland) is enforced through a system of jury trial in Crown Courts (for the more serious offences) and by a system of summary jurisdiction in Magistrates' Courts (for offences of a minor nature), with some offences being “triable either way”, that is in either court according to the wishes first of the prosecutor, and then of the accused who can elect to be tried in a higher court than that chosen by the prosecutor. A right of appeal exists to the Crown Court from a decision of a Magistrates' Court, and from the Crown Court to a Court of Criminal Appeal, with a possibility of a final appeal to the House of Lords. In Scotland, there is a system of jury trial in the High Court and Sheriff Court and summary trials in the Sheriff Court and District Court. In the case of offences “triable either way” it is for the prosecutor to decide whether trial should be before a jury or in a summary court. A right of appeal exists from all courts to the appeal court. There is no final appeal to the House of Lords. However, in the United Kingdom, criminal law plays only a minor role in the enforcement of IPRs, although an increasing one in cases of counterfeit goods (regarded as criminal infringement of trademarks) and of pirated goods (regarded as criminal infringement of copyrights, performance rights and design rights). In England and Wales, the offences of trademark and copyright infringement (as defined in Answer 21 below) may be tried either by summary jurisdiction in a Magistrates' Court or by a jury trial before a Crown Court. The position in Northern Ireland is similar. In Scotland, the offences of trademark and copyright infringements may be tried either summarily or on indictment before a jury.

There is no provision for infringements of patents or registered designs to be treated as criminal offences. Likewise, actions for breach of confidence (misuse of trade secrets) or for infringement of rights arising from unregistered trademarks are purely civil matters, not punishable as criminal offences. An offence of trademark infringement is committed under section 92 of the Trade Marks Act 1994. The detailed provisions of this enactment can be summarized as applying when there has been unauthorized 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, offer for sale, distribution or other disposal of goods bearing 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 a mark, provided in each such case that the activity has been “in the course of a business”. However, no offence is committed under these summarized provisions unless the goods in question are goods for which the mark is registered or unless the trademark has such a reputation in the United Kingdom that its unauthorized 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. It is also a criminal offence to use the Royal Arms or the Olympic Symbol without authorization. An offence of infringement of copyright (or of a right in a public performance) is committed under the provisions of section 107 (or section 198) of the Copyright, Designs and Patents Act 1988. Under these provisions, a criminal offence can be summarized as committed under generally the same circumstances as when an act of copyright becomes actionable as a civil matter, provided the article of which complaint is one which the defendant “knows or has reason to believe is an infringing copy of a copyright work” (or of a performance right). Also, with such a degree of knowledge, it is an offence to make or have in possession an article specifically designed or adapted to making copies of a particular copyright work; or to perform, play or show in public a literary, dramatic or musical work, a sound recording or a film.

In the case of trademark infringements classified as criminal offences (for which see Answer 21 above), every “local weights and measures authority” in England and Wales (and the Department of Economic Development in Northern Ireland) has a duty to enforce these provisions. However, this duty does not preclude a private prosecution for these offences (see Answer 23 below). The reference above to a “duty” implies that such authorities should act on their own initiative. However, normally they will only do so following the making of a complaint or following the provision of information indicating the commission of an offence under the criminal legal provisions summarized in Answer 21. In Scotland, as in England and Wales, it is the duty of every “local weights and measures authority” to enforce the offences of trademark and copyright infringement. However, these authorities (i.e. councils constituted under section 2 of the Local Government etc. (Scotland) Act 1994) do not have a right to prosecute. All infringements would be reported by the local authority to the public prosecutor who has a discretion as to whether to initiate criminal proceedings. Any individual may draw an infringement to the attention of the local authority or the prosecutor.

Yes, a prosecution can be brought by any person or body having a sufficient personal or public reason for seeking enforcement of the criminal law. However, in Scotland private prosecution is so wholly exceptional as to represent no more than a theoretical possibility on the part of an individual who has suffered loss in respect of trademark or copyright infringement.

(1) imprisonment; For offences tried by summary proceedings, the maximum term of imprisonment is six months for trademark and copyright (including performance right) infringements, but unauthorized use of either the Royal Arms, or the Olympic Symbol, is not punishable by imprisonment. For offences tried by jury in a Crown Court, or similar, an unlimited fine may be imposed for infringements of trademarks (including unauthorized use of the Olympic Symbol) or copyrights (including performance rights), but unauthorized use of the Royal Arms is triable only by summary procedure. If these imprisonable offences are tried before a Crown Court (or similar), the maximum period of imprisonment is ten years for a trademark infringement but only two years for a copyright (or performance right) infringement. (2) monetary fines; For these offences tried by summary proceedings, the maximum fine is currently £5,000, except in a case of unauthorized use of the Royal Arms where the maximum fine is £500. (3)seizure, forfeiture and destruction of infringing goods and materials and implements for their production; Where a proprietor of a registered trademark, or the owner of a copyright, performance right or design right, finds or believes that a person has an infringing article “in his possession, custody or control in the course of a business”, or an article specifically designed or adapted for making such an article, he may apply to a court (including for this purpose a Magistrates' Court, or similar) for an order that the infringing article be delivered up to him or to such other person as the court may direct. Also, where such proprietor or owner finds such articles “exposed or otherwise immediately available for sale or hire” those articles may be seized by such a person or by someone authorized by him provided that prior notice of such intended seizure has been given to a local police station. These powers may only be exercised within six years of the articles in question having been made, unless the rightholder has been under a disability or has been prevented by fraud or concealment from discovering the relevant facts. After such delivery up or seizure, an application may be made to a court (being the High Court or a county court, or (in Scotland) the Court of Session or a sheriff court) that the goods detained or seized should be forfeited to the rightholder, or be destroyed or otherwise dealt with as the court may think fit, or that no such order should be made. If no such order is made, the person from whom the goods were taken is entitled to their return. (4) other. In the case of infringements of copyright or performance right (but not of design right or trademark), where a reasonable belief can be shown that an offence has, or is about to be, committed, application may be made to a local magistrate (sheriff or justice of the peace in Scotland) for a search warrant authorizing a police officer to enter and search premises (which term extends to land, buildings, moveable structures, vehicles, vessels and aircraft). Upon the execution of such a search warrant, the police officer may take into custody any evidence found of the commission (or planned commission) of any such offence. The warrant remains in force for 28 days and may authorize persons to accompany the police officer. The same penalties apply to offences committed in Scotland or Northern Ireland and likewise these offences are there triable either by a summary procedure (with more limited penalties) or by a jury trial in a higher court.

There are no provisions governing the length or cost of proceedings. However, the criminal courts have power to award a defendant to pay costs to the prosecutor, and a defendant who is acquitted of the offence with which he is charged, may (at the discretion of the court) be awarded its costs to be paid out of public funds. It is not the custom to award such costs where the conduct of the defendant has been such as to make it reasonable for proceedings to be brought against him. In Scotland, there is no power to award expenses either in favour of or against the public prosecutor or an accused person. Legal aid is available to defend criminal proceedings on indictment where the court considers that the expenses of the case cannot be met without due hardship to the accused or his dependents. It is available in summary proceedings where the legal aid authority is satisfied not only that the expenses of the case cannot be met without undue hardship to the accused or his dependents but also that it is in the interests of justice that legal aid be made available. Criminal legal aid is made available in Scotland without a financial contribution from the accused person. No data is available on the actual duration of proceedings and their cost. However, it is to be noted that applications of the court referred to in Answer 24(3) may be made to a Magistrates' Court (or similar) and this can be done by a solicitor acting alone and with minimal expenditure. Of course, if the proceedings are contested, costs can mount; and there is the possibility of appeals to one or more higher courts.