- Civil
- Criminal
- Administrative
Civil
Civil remedies are when the IP rights holder brings a law suit against the party he claims is infringing his rights.
The main remedies available are:-
- injunction
- delivery up/destruction
- provision of information (as to extent of dealings, suppliers and customers)
- damages
- costs
The first three of these are usually available as interlocutory remedies (i.e. before full trial) where the IP rights holder can convince the court that he needs immediate assistance because of the urgency of the case, and that it would be unjust to make him wait the lengthy period that it often takes for a matter to come to trial.
Also many legal systems around the world provide ex parte remedies in cases of sufficient seriousness and urgency. In the UK the best of these are called Anton Piller Orders and Mareva Injunctions, and are known as the nuclear weapons in the civil litigators armoury. Similar remedies are available in most countries.
Anton Piller Order
The Anton Piller Order is a bundle of orders, the most important of which orders the defendant to allow the IP rights holder to enter his premises to search for and seize relevant infringing items, and documents which show the nature and extent of the defendants infringing activities (i.e. his sources of supply and his customers).
Such information may be crucial to determine the source of the infringing goods, and thereby properly tackle the problem.
This is all information which the IP rights holder would be entitled to anyway in the normal course of the action, but here the holder is saying to the court that the nature of the defendant and his activities are such that unless this Order is obtained immediately, and without the defendant having knowledge of it, there is a significant risk that the evidence he has will be concealed from the rights holder and/or destroyed.
It is a draconian remedy, and in the UK its granting is surrounded with all sorts of safeguards to seek to ensure that the defendant's rights are impinged upon only to the extent necessary.
Mareva injunction
The Mareva injunction is similarly dramatic, and is designed to freeze the defendant's assets. Again it is granted ex parte, this time in circumstances where the IP rights holder can demonstrate a real risk that the defendant will conceal or spirit away assets so as to defeat any award of damages/costs which the holder is likely to get.
The effect is that the defendant is ordered to disclose all his bank accounts and other assets to the rights holder, and is unable to dispose of these assets without the agreement of the holder or the court. This can have a monumental impact on a defendant.
Clearly, the remedies available to you through the civil process are extremely powerful in appropriate cases. The down side is cost. Fees have to be paid to the lawyers running these cases, and these lawyers will invariably have worked long and hard to put together the level of evidence required to convince the court to assist.
Criminal
In the case of Criminal remedies, IP rights holders generally complain to the public prosecutor/ police and leave them to enforce the rights, but it is possible in some countries such as the UK, to bring a private criminal prosecution where the rights holder is in the position of prosecutor.
Most countries have criminal remedies for the more blatant infringements, typically for counterfeiting (copying trade marks) and piracy (copying copyright material, typically videos, cassettes, CDs and computer software). The punishments available are usually at the court's discretion, with maximum fines and/or prison terms set by statute.
Rarely, however, are any minimum penalties set down. It is common for courts to be extremely generous to defendants in criminal actions and let them off with modest fines, even for repeat offenders.
Having said that, there are exceptions to every rule. In China, for example, there have been cases where counterfeiters have been executed. In India, a producer of counterfeit lubricants was paraded by the Police through his residential district, in nothing but his underwear - just being taken in for questioning!
But such "deterrents" are fairly rare. All too often counterfeiting and piracy are misconceived by the courts as victimless crimes, where the only ones likely to come to any harm are the big multi-nationals, who will only suffer financially and who are perceived as being able to afford it anyway. This attitude may also affect the willingness of the police to act.
Be that as it may, using the criminal law may be the best way ahead for certain types of problem. In theory it's cheap, certainly initially, where a police "raid" could take place on the basis of a simple verbal complaint (compared to the civil equivalent, an Anton Piller Order, which is only granted by a Judge on the basis of compelling evidence which will usually be very expensive to prepare and present).
However, later on the costs involved in "supporting" a poolice prosecution could easily mirror those of bringing a civil action.
It can have a far more dramatic effect than mere civil proceedings, even the execution of an Anton Piller Order.
If successfully prosecuted there is at least the potential for a more serious punishment than could be expected by the civil process, with all the benefits that can have of deterring that particular offender, and others who get to hear about it.
The main disadvantages of going the criminal route are:-
- The rights holder usually needs a very blatant case either to fall within the relevant laws, or to get the police excited.
- The rights holder loses control as the running of the "raid" and any subsequent prosecution are taken on by the police.
Those running the case, and the court hearing it, are often totally unfamiliar with the laws involved and the general background to counterfeiting. It is this lack of knowledge which all too often leads to good cases being dropped or guilty parties being acquitted or insufficiently punished.
In many countries the IP rights holder could get into a situation where "facilitation payments" are expected. Where bribery is rife the rights holder could then find that despite his best efforts, and a cast iron case, the police can easily be persuaded to drop the prosecution.
The standard of proof in criminal cases is higher than that in civil cases. Furthermore, it is common for the criminal law to require some level of guilty knowledge on the part of the accused. Those people involved in the distribution or retailing of counterfeits are often successfully able to escape liability by convincing the court that they had no reason to believe they were dealing in counterfeit goods.
Nevertheless, the criminal route, properly used is an extremely powerful option.
Administrative
Administrative remedies are much as above but some administrative body other than the police effects the enforcement. In the UK this will usually be Customs or the Trading Standards Dept of the relevant local authority.
In many countries there are mechanisms available to have Customs monitor imports/exports for suspect shipments. For example, the EU has a Counterfeit Goods Regulation, first passed in 1986, with a better version (on the basis of experience) passed in 1994. Under this all Member States are supposed to have put appropriate mechanisms in place to detain imports or exports of counterfeit and pirate goods (and goods which infringe neighbouring rights such as design rights). The IP rights holder files an application with Customs on the basis of the rights in question, giving Customs as much information as possible about where suspect shipments may come from and who they may be going to. Customs will make random checks on the basis of the criteria given to them, and give the rightsholder an opportunity to examine any suspect cargoes.
Once the IP rights holder confirms the goods are illegitimate, Customs will then formally seize the goods and commence the appropriate proceedings.
Usually, this results in the importer/exporter agreeing to the destruction of the goods. In addition you, as the rights holder, gain valuable information as to a likely source of counterfeits on which to base further investigation/action.
Potentially therefore, this is a very cheap and effective option. In practice, however, it is rarely effective these days. The counterfeiters are now wise enough to misdescribe their wares so that Customs simply won't be alerted to the possibility that the cargo is counterfeit, especially when they have so many other demands on their resources, notably the fight against narcotics. In addition, the EU itself is a free market so there are no border checks between Member States. Thus, as regards imports, all the counterfeiters need to do is find a weak link to gain entry, and thereafter be able to move their goods around the EU, virtually at will.
The other main Administrative route is through Trading Standards Departments (as they are called in the UK) and their equivalents elsewhere. These are public officials whose task is to protect the public from unscrupulous traders. They often operate laws providing criminal offences and penalties. Going through them is much the same as seeking to enforce your rights through the police, with the exception that Trading Standards Officers are far better acquainted with the laws and issues in question.
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
For further information please contact Peter Rouse at Rouse & Co at
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