Provisional (or interlocutory) injunctions are taken by the judge pending the final decision.
They are intended to prevent damage and to prevent imminent infringement (Article 62.1 of theJurisdiction Agreement).
It may also aim to ensure that the alleged infringer is able to pay in the event of a conviction (section 62.1 and 62.3 of theJurisdiction Agreement).
This type of measure is also provided for in article 44 of the ASPIC.
Types of injunctions
Section 62 of theJurisdiction Agreement provides for a number of possible injunctions:
- prohibition to continue counterfeiting under penalty;
- authorize the continuation of acts of counterfeiting but by constituting guarantees;
- seizure or delivery of counterfeit goods (Rule 211.1 (b) of the rules of procedure) ;
- conservatory attachment of movable and immovable property of the infringer (rule 211.1 (c) of the rules of procedure);
- freezing of bank accounts and other assets (Rule 211.1 (c) of the rules of procedure).
Of course, these injunctions are very powerful (since no final decision has occurred). It is therefore necessary to balance the interests of the parties against the potential harm that these measures will cause (section 62.2 of theJurisdiction Agreement and rule 211.3 of rules of procedure).
They must therefore be proportionate and dissuasive (Article 3 Directive EC / 2004/48 relating to the respect of IP rights) and a guarantee may be requested from the applicant (rule 211.5 of the rules of procedure) especially if the injunction is made upon request.
In any event, these measures are left to the discretion of the judge (section 62.1 of theJurisdiction Agreement): it is he who decides whether an injunction should be issued.
Defense to these injunctions
Of course, when a temporary injunction is considered or requested, the defendant can try to defend himself.
In connection with patent law
Validity of the patent
This defense may be based on the questionable validity of the title (SISVEL v Xiaomi, Netherlands 2019).
Indeed, it would be unfair to issue an injunction if the title is questionable or if the debates about its validity are highly complex.
Likewise, the proportionality of the measure must be taken into account.
For example, if the counterfeiting in question relates to a request for a few hundred thousand euros, it would be debatable to request a temporary injunction which could cost the defendant several hundred million euros.
Likewise, if another provisional measure can be envisaged (eg payment of damages and interest rather than an outright prohibition, provided for in article 12 of the Directive on the respect of IP rights 2004/48 / EC and section 62.1 of theJurisdiction Agreement), the judge must take it into account.
If the patentee has also tolerated the existence of an infringement for a large number of years, we can say that it would be more "appropriate" to await the final decision (except in specific cases).
Counterfeiting concerning negligible elements
It may happen, particularly in the field of electronic equipment (such as a smartphone), that the claimed object is a negligible element with regard to a more complex product.
We can then ask ourselves whether it would be proportionate to prohibit, by interim injunction, the sale of the complex product.
If the plaintiff is a “non-economic entity” (or patent troll), we may wonder if an injunction is necessary.
Indeed, since this patent troll does not market a product covered by the patent, it is difficult to argue that imminent damage is about to happen (see IPCom vs Xiaomi, UK, 2019 or SISVEL v Xiaomi, Netherlands 2019).
Exception to counterfeiting
There are cases where certain exceptions to counterfeiting can be invoked.
If the invocation of these exceptions seems serious, the judge must of course take it into account.
In connection with the law in general
The claimant must act in good faith in their requests.
Thus, if discussions have taken place, it must have been conducted in good faith.
Abuse of rights
The plaintiff's action must not have the sole purpose of causing harm to the infringer (see section 41 of the ASPIC)
The claimant must not use this action by abusing its dominant position (Vestel vs HEVC (EWHC 2766))
European law therefore continues to apply.
Likewise, it may happen that the procedure may harm consumers and / or their health.
We therefore understand that seeking an interim injunction that would deprive consumers of a product essential to their health (eg a drug whose sole supplier is the alleged infringer) would be unacceptable.
Permanent injunctions are taken by the judge with the final decision.
They enshrine the rights of the parties as noted in the final decision (Article 63.1 of theAgreement on the Unified Patent Court) in order to prohibit any subsequent counterfeiting.
Permanent injunctions can be directed against the infringer but also against a third party facilitating counterfeiting (article 63 of theAgreement on the Unified Patent Court).
A penalty payment is associated with this injunction (article 63.2 of theAgreement on the Unified Patent Court)
Types of injunctions
There is only one type of permanent injunction: prohibiting the continuation of counterfeiting (section 63.1 of theAgreement on the Unified Patent Court)
The deleterious effects of such an injunction do not seem to have to be taken into account by the judge: the counterfeiter is a counterfeiter, he must stop being so!
Here it is unclear whether the issuance of this type of injunction remains at the discretion of the judges (section 63 of theAgreement on the Unified Patent Court, noted article article 62 of theAgreement on the Unified Patent Court state this discretion explicitly. So should we understand that we have no discretion for Article 63?).
Corrective measures are taken by the judge with the final decision.
Types of measures
The judges can pronounce (article 64 of theAgreement on the Unified Patent Court) a large number of corrective measures such as:
- a declaration of counterfeiting;
- recall of products from sales channels;
- elimination of the contentious nature of the products;
- the final exclusion of products from commercial channels; or
- destruction of the products and / or materials and instruments concerned.
However, this list is not exhaustive.
It is likely that the judge could draw on national practices to order such measures.
When considering a request for corrective measures, account will be taken of the fact that there must be proportionality between the seriousness of the breach and the corrective measures ordered, as well as the interests of third parties (Article 10.3 of Directive EC / 2004/48).
The judge remains in control of his decision: these corrective measures are simply an option for him, even if requested by a party (article 64 of theAgreement on the Unified Patent Court).
Communication of information
In the context of a dispute, and once the infringer has been judged as such, the judge can order a communication of information (article 67 of theJurisdiction Agreement).
Type of information to be communicated
The counterfeiter (or a third party having a link with counterfeiting) can receive the order to communicate (article 67.1 and 67.2 of theJurisdiction Agreement) :
- the origin and distribution channels of the disputed products or processes;
- the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the disputed products; and
- the identity of any third party involved in the production or distribution of the disputed products or in the use of the disputed process.
Here, the judge verifies that the applicant's requests are justified and proportionate (section 67.1 of theJurisdiction Agreement).
The judge is therefore responsible for whether or not to grant this communication of information (section 67.1 of theJurisdiction Agreement).
Damages and interests
The purpose of the damages is to compensate for the damage suffered by the applicant (section 68.1 of theJurisdiction Agreement).
Calculation of damages
For the calculation of damages, you must:
- ensure that the applicant is in the same situation as if no infringement had taken place (Article 68.2 of theJurisdiction Agreement).
- ensure that the counterfeiter does not benefit from this counterfeit, without it being punitive (article 68.2 of theJurisdiction Agreement)
- profits of the infringer in connection with this infringement (article 68.3a of theJurisdiction Agreement),
- taking into account customer capture,
It is also possible to fix fixed damages on the basis of elements such as, at least, the amount of the royalties or rights which would have been due if the infringer had requested authorization to use the patent in question (article 68.3b ofJurisdiction Agreement).