Geography Reference
In-Depth Information
with variances in the interpretation and application of the commercial scale
requirement, leads to inconsistencies.
In the UK, responding to complaints from right holders that for the purposes of
civil litigation they were unable to obtain information from the Trading
Standards Office, which, among other things, conducts investigations into
counterfeiting, changes were made to Part 9 of the Enterprise Act 2002.
Section 241A of that Act enables public authorities subject to competition law
concerns to disclose information where the information is to be used for civil
proceedings 'relating to or arising out of the infringement of an intellectual
property right or relating to or arising out of passing off or the misuse of a trade
secret'.
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(e) Provisional and precautionary measures
i.
Interlocutory injunction
Article 9(1) of the Enforcement Directive provides that Member States shall
ensure that the judicial authorities may, at the request of the applicant:
7.48
(a) issue against the alleged infringer an interlocutory injunction intended to prevent
any imminent infringement of an intellectual property right, or to forbid, on a
provisional basis and subject, where appropriate, to a recurring penalty payment
where provided for by national law, the continuation of the alleged infringements of
that right, or to make such continuation subject to the lodging of guarantees
intended to ensure the compensation of the rightholder …
Article 44.1 of the TRIPS Agreement, in relation to imports, exempts from
injunctions 'in respect of protected subject matter acquired or ordered by a
person prior to knowing or having reasonable grounds to know that dealing in
such subject matter would entail the infringement of an intellectual property
right'.
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The remedy of injunction is usually granted by common law courts on a
discretionary basis. Among the factors considered by the court are whether: (a)
damages provides an adequate remedy; (b) the order will require constant
supervision by the court; (c) the applicant has engaged in some disentitling
conduct, such as its own infringing activity; and (d) the applicant has delayed in
seeking its remedy or has acquiesced in the respondent's conduct.
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Department for Business, Enterprise and Regulatory Reform, 'A Guidance Note on Information Disclosure to
Consumers and Intellectual Property Rights Holders for Civil Proceedings', March 2008, accessed at
http://www.bis.gov.uk/files/file41381.pdf.
