Injunctions Under their general jurisdiction and under the provisions of the various intellectual property laws, the courts may grant relief for infringement in the form of an interim or permanent injunction and, at the option of the plaintiff, either damages or an account of profits. Under their general jurisdiction the courts have the power to order an unsuccessful party to pay the costs of the successful party. The courts apply the rule that they may grant an interim injunction if the court is satisfied that there is a serious issue to be tried, if the risk of damage to the plaintiff if the injunction is not granted will not be compensated by an order for damages, provided that the plaintiff gives an undertaking to compensate the defendant if the injunction is later found by the court to be unjustified. A permanent injunction may be granted where the plaintiff establishes infringement. Damages, including recovery of profits, and expenses, including attorney's fees Under their general jurisdiction and under the provisions of the various intellectual property laws, the courts have wide powers to award damages for infringement, or if the plaintiff can be awarded damages in the case of innocent infringement but the quantum of damages will take into account the fact that the infringement was innocent. Damages usually include the recovery of commercial losses associated with the infringement and an award of damages would normally be accompanied by an order for payment of legal costs incurred by the successful party in the case. As to the expenses and attorney’s fees, it is the practice in Antigua and Barbuda to order that costs be taxed if not otherwise agreed. Under such order the successful party will normally recover a sum corresponding to the reasonable sums which were reasonably expended in the litigation (including court costs and attorney’s fees). If these cannot be agreed between the parties, the Registrar assesses such costs. However, as a party will normally spend more money on a case than the Registrar will consider reasonable, and as the Registrar will disallow all claimed costs for which there is not sufficient evidence of how the costs have been incurred and of receipts for expenditure, a successful party will, in actuality, probably recover only two-thirds of its actual costs. Where the court considers that litigation (or a single issue in it) was brought unreasonably, it can make an order for the costs thereof to be assessed on an “indemnity basis”. Under this basis the party’s costs are assessed as its total costs other than those which were unreasonably incurred. Destruction or other disposal of infringing goods and materials/implements for their production The Courts have an inherent jurisdiction to order defendants to deliver up infringing goods and copies as well as materials/implements for their production. Provisions of the Copyright Bill allows for the seizure of infringing goods or copies, and the equipment used for making them, and delivery of the goods, copies or equipment to the right owner, the exclusive licensee or the performer, or their destruction. Under the Copyright Act, if the court directs that copies be forfeited to the State, the copies must be disposed of as prescribed by regulations. For patent infringement, a court has statutory power to make an order for the infringer “to deliver up or destroy any patented product in relation to which the patent has been infringed or any article in which that product is inextricably comprised”. For infringement of a registered trademark, the court may order the offending sign to be erased, removed or obliterated from infringing goods, material or articles in the possession, custody or control of the infringer; or for such goods, materials or articles to be delivered up to the trademark proprietor, and the courts can then order their destruction. This is not spelt out in the Bill, but the court does have the power to order any such relief it deems necessary. For infringement of copyright or neighbouring rights, the court may (as a part of its inherent powers) similarly order delivery up of infringing works in the custody of the defendant. In addition, orders for delivery up and subsequent destruction of infringing goods are also available as part of the criminal procedure for copyright infringement (see the answer to question 24 below). The court likewise has inherent powers to make order for delivery up, or destruction, of articles coming into existence for the purposes of passing off or as a result of knowingly acting in breach of confidence. Any other remedies As an alternative to an award of damages, the owner of copyright or neighbouring rights, a patent or a new plant variety, upon a find of infringement of his rights, may elect to seek, instead of damages, an account of profits. This requires the court to assess the profits, which the infringer has made as a result of his infringing acts, and to pay these over to the right holder.
[Answer 24: Copyright Under section 46 of the Copyright Bill, the penalty for infringement for profit-making purposes by a person knowing or having reason to believe that he is committing an infringement, in summary conviction is a fine between $5000.00 EC and $10,000.00 EC and to two or three years imprisonment, depending on the type of infringement. Where there has been no decision on such remedies in civil proceedings, the magistrate has the authority to order the impounding of suspected copies of works on sound recordings, as well as the packaging of the implements that could be used for the making of, and the documents, accounts or business papers referring to such copies; to order the forfeiture and seizure of all copies of works or sound recordings manufactured, reproduced, distributed, sold or otherwise used, intended for use or possessed with intent to use in contravention of the rights of the owner and all plates, moulds, masters, tapes, film negatives or other articles by means of which such copies of works or sound recordings may be reproduced and all electronic, mechanical or other devices for manufacturing, reproducing or assembling such copies of works or sound recordings; to order the destruction or other reasonable disposition of infringing copies and their packaging outside the channels of commerce; where there is danger that implements may be used to commit or continue to commit acts of infringements, to order their destruction or reasonable disposition outside the channels of commerce. Where an offence under section 46 committed by a body corporate is proved to have been committed with the consent or connivance or attributable to neglect on the part of any director, manager, secretary or person purporting to act in any such capacity, he as well as the body corporate is guilty and liable to the above penalties. Trademarks Under section 23 of the Trade Marks Bill, it is an offence for a person to apply to goods or their packaging a mark identical to, or likely to be mistaken for, a registered trademark, sell or let for hire, offer or expose for sale or hire or distribute goods which bear or the packaging of which bears such a mark, has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything by himself or another which would be an offence as mentioned above. The penalty on summary conviction is a fine of $100,000 and imprisonment for five (5) years. Patents Under section 34 of the Patent Bill, it is an offence for a person to knowingly and wilfully make, import, offer for sale, sell, use the product, or the stocking of the product for sale or use, or the use of the process patented without the consent of owner or the licensee of. The penalty on summary conviction is a fine of $100,000 and imprisonment for three (3) years. Industrial designs Section 21 provides that any person who knowingly makes, sells, or imports articles incorporating the industrial design without the consent of the right holder commits an offence. The penalty on summary conviction is a fine of $50,000 and imprisonment for three (3) years. Integrated circuits and topography bill Under section 15 it is an offence to perform any of the acts listed in section 6 without the authorisation of the right holder. These acts include the reproduction of the protected layout-design in its entirety or any part thereof, importing, selling, or otherwise distributing for commercial purposes the protected design or integrated circuit incorporating the layout- design. The penalty on summary conviction is a fine of $10,000.00 and imprisonment for five (5) years, and the court may also order the seizure, forfeiture and destruction of the layout-designs, integrated circuits or articles concerned and of any materials or implements, the predominant use of which has been in the commission of the offence. Geographical indications Section 7 provides that any person who knowingly and with intent to deceive, performs any act of the acts referred to in section 3, such as the means in the designation or presentation of a good in question originates in a geographical area other than the true place of origin, commits an offence. Any use constituting an unfair competition within the meaning of Article 10bis of the Paris Convention, and the use of a geographical indication identifying wines or spirits not originating in the place indicated, are also offences. The penalty on summary conviction is a fine of $50,000 and imprisonment for three (3) years.]