Presentation on theme: "INTELLECTUAL PROPERTY INTERIM INJUNCTIONS: A PRACTICAL GUIDE Kevin Glover, Shortland Chambers www.iplawyer.co.nz."— Presentation transcript:
INTELLECTUAL PROPERTY INTERIM INJUNCTIONS: A PRACTICAL GUIDE Kevin Glover, Shortland Chambers www.iplawyer.co.nz
Interim injunctions Interim nature Certain date or until further order of the Court Mandatory injunctions exceptional Jurisdiction under HCR 7.53 Interlocutory application: see HCR 7.19 etc Also available in the District Court
Options Elsewhere in High Court Rules: Search order Freezing order Preservation order Matters affecting choice
Urgent matters Without notice applications Duty of disclosure Return date Interim interim relief?
Injunctions in IP cases Typical IP cases Trade mark/passing off/Fair Trading Act Breach of confidence (also possibly copyright?) Restraint of trade with other issues Copyright/designs Patents Note overlap with employment jurisdiction – powers of Employment Court
IP interim injunction applications in NZ High Court, 2010-13
What needs to be filed Statement of claim Obligation to serve primary documents Notice of proceeding NB possible when proceeding already on foot, e.g. Muzz Buzz  NZHC 2490 Interlocutory application Evidence in support Undertaking as to damages
Application State relief sought Only if able to obtain a permanent injunction or other equitable relief Draft at same time as cease and desist letter What court is likely to grant Geographical limits of reputation in Fair Trading Act / passing off Avoid circularity in breach of confidence orders Court will be reluctant to stop defendants from trading Schedules may help to clarify
Undertaking as to damages Mandatory requirement: HCR 7.54 Must be signed “…the Applicant will comply with any order for the payment of damages to compensate the other party for any damage sustained through the injunction.” Where likelihood of financial detriment, evidence as to means required. Examples of where the undertaking has been relied upon Kim Dotcom?
Practical tips Involve counsel as soon as possible, ideally prior to or at cease and desist letter stage Evidence Allow plenty of time Use the deponent’s own words Brevity where possible Consider whether expert evidence required Rules of evidence e.g. hearsay Evidence in reply
Once the application is filed Procedure Ability for defendants to respond Separate obligation to file statement of defence Synopsis Settlement? Agreement, undertakings or consent orders Hearing Usually less than 1 day Cross-examination generally not available
The test American Cyanamid Co v Ethicon Limited  AC 396 (HL) Klissers Farmhouse Bakeries Limited v Harvest Bakeries Limited  2 NZLR 129 (CA) Serious question to be tried Balance of convenience Overall justice of the case
Serious question to be tried Whether the claim would lead to relief if proven Comparisons: Previous test: strong prima facie case Strongly arguable case Summary judgment / strike out tests Relevance of defences? Strength of case Special cases: Prior restraint of freedom of expression:
Balance of convenience Relative impact of granting or declining injunction Parties to the proceeding Third parties Adequacy of damages Plaintiff Defendant Likelihood of obtaining award Scale of defendant’s business Conflicting authorities
Balance of convenience Proportionality – what orders are required? Special considerations for IP cases Brand damage Licence fees Muzz Buzz Franchising v JB Holdings  NZHC 2490 Filed in 2011, interim injunction application August 2012, hearing Sept 2012, trial March 2013.
Delay Will colour the Court’s perception of seriousness Relevant to overall justice of the case Raised in Hearing Care Manawatu v National Hearing Care (Heath J, 31 March 2010). Absence of proof of damage can be harmful
Overall justice of the case Klissers, but not American Cyanamid Relative strength of cases Serious question but case is not strong Residual discretion Delay Other conduct of the plaintiff Practical impact?
When the decision is released Effective date of orders Apply for stay if required High Court or Court of Appeal Not automatic Risk of contempt Settlement discussions Often determinative Cannot agree to vary court order Deal with costs
Resources Slides available from www.iplawyer.co.nz NZLS seminar, Cull and Kos (2000)