This article is written by Yazad.M.Udwadia. In this article, he discusses the remedies in case of IPR violation.

Introduction

Anton Pillar Order, Mareva Injunctions and Norwich Pharmacal Order

This paper will explain the concept of the three above mentioned remedies in cases of violations of IPR and the stages at which they can be granted. It will begin with a brief introduction of what an Injunction primarily is, and will then discuss the concepts of Anton Pillar orders, Mareva injunction, and the Norwich Pharmacal Order. The discussion regarding the three remedies will be a detailed one, discussing the various instances when they can be enforced, as well as the procedures relating to their usage itself.

Injunctions: A Brief Overview

The term injunction has been defined as “a judicial process whereby a party is required to do, or refrain from doing, any particular act.” An injunction is a preventive relief, granted at the discretion of the Court. This discretion must be exercised in accordance with the well-established principles of law and judicial precedents. Injunction like any other equitable remedy is a remedy in personam.

Injunctions could be classified as prohibitory or mandatory. Prohibitory is when one of the parties is ordered to restrain from doing a wrongful act, which would infringe some legal or equitable right of the Plaintiff. Mandatory is where a party is actually compelled to do something. It could be both prohibitory and mandatory when the person is restrained from doing certain things along with being compelled to do something in order to protect the rights of the Plaintiff. There are namely two types of injunction, i.e. temporary or interlocutory injunctions, and permanent or perpetual injunction.

The grant of an injunction is a matter requiring the exercise of discretion by the Court while checking whether a prima facie case has been made out or not. If it is established that there is a bona fide contention between the parties or a serious question is to be tried then it can be said that there is a prima facie case. Secondly, the condition that needs to be satisfied for granting a temporary injunction is that the balance of convenience must be in favor of the Applicant. The balance of convenience means that comparative mischief or inconvenience which is likely to be caused to the Applicant if the injunction is not granted versus the inconvenience that is likely to cause to the other party if such an injunction is granted. The Applicant should suffer an irreparable injury if no such injunction is granted. The expression irreparable injury means such a material injury, which cannot be adequately remedied by damages.

Mareva Injunction

It is used to describe injunctions that restrain the Defendant from removing assets from the jurisdiction or dealing with or parting with the assets in such a way as to render the execution of the decree if given in favor of the Plaintiff a mere brutum fulmen (an ineffectual legal judgment). It is granted to maintain status quo till the Court adjudicates upon the rights and liabilities of the parties. Mareva injunction is mainly used to aid in the recovery of debts so as to help the creditor by preventing the debtor from absconding or disposing of his assets overseas. In addition, it is also used to protect the right of the party to receive compensation in cases of breach of the contract specifically, when the liability is mentioned in the contract itself.

Mareva Injunction gets its name from the case of Mareva Compania Naviera SA v International Bulkcarriers SA. The Court of Appeal granted an injunction to the Plaintiffs on an ex-parte application, through which the Defendants were restricted from parting with their money in Bank of London, so as to settle the claims of the Plaintiff in case they were able to prove the same.

There are a few conditions, which need to be satisfied

• The Plaintiff needs to have a legal or an equitable right justiciable in Court. Evidence needs to be shown that the Defendant is trying to dispose of his assets so as to defeat the Judgement.
• In case the injunction is not granted, it would cause an irreparable loss to the Plaintiff.
• The balance of convenience should lie with the Plaintiff.
• Any other factors, which may play a material role. Eg: public interest.

In India, Mareva injunction can be granted either under Order 38 Rule 5 and 6 or under Order 39 Rule 1 of the CPC. Essentially an interlocutory injunction, the elements that a Plaintiff needs to establish in order to get a Mareva order are along the lines of any interim injunction – i.e. a prima facie case, balance of convenience and irreparable injury. Over the years, the exact criteria have been clearly laid down and include:

• There must exist a cause of action at the time the order is to be granted, and the Plaintiff must demonstrate a good arguable case.
• The Defendant must have assets within the jurisdiction of the Court.
• The balance of convenience must be in favor of the Plaintiff being granted the injunction.
• The Plaintiff must establish that the Defendant lacks probity and that there is a real risk of dissipation of assets.
• There has been no delay in applying for the injunction.

The Supreme Court in Raman Tech. & Process Eng. Co. v. Solanki Traders accepted all these guidelines. This case also laid down the nature and scope of this injunction, stating that it is supposed to be used sparingly and with strict compliance to the rule so as to maintain the rights of the Plaintiff and the Defendant. It is not meant to be used by the Plaintiff as a tool to convert his unsecured debt to a secured one or as leverage to coerce the Defendant into a settlement or to give the Plaintiff a priority over the assets of the Defendant. Moreover, the right of the Defendant to carry on business should not be affected without due evidence. Generally, Mareva injunction is granted at the earlier stages of proceedings but even if it is granted after the Final Judgment, it is still interlocutory because there is no final relief, but only ancillary to the main or substantive relief.  

Anton Piller Order

This order is used in cases where there is a high probability that the Defendant may destroy crucial evidence in his custody for the sole purpose of defeating the ends of justice. To prevent this from happening, the Plaintiff on an ex-parte application, even without any notice being given to the Defendant, can approach the Court to enter the premises of the Defendant for the sole purpose to preserve the evidence. Furthermore, an Anton Piller order acts as a mandatory injunction so it can be granted under specific acts as well such as the Copyright Act and other IP laws. Anton Piller order is generally used in Intellectual Property law cases. In addition, it can also be used after the decree is passed to find out assets which can be taken in execution of the decree.

It may seem like an Anton Piller order is similar to a search warrant but it is not the case, as an Anton Piller order allows the Plaintiff to enter the property of the Defendant without his permission. However, the Defendant under the pressure of the Court order gives this permission because the failure to give the permission will enable contempt of Court proceedings, and also empower the Court to draw adverse inferences. In addition, another distinction is that an Anton Piller order is a direction in personam onto the Defendant to grant inspection.

Anton Piller order gets its name from the case in which it was first issued, i.e. Anton Piller KG v Manufacturing Process Ltd. The Court for the first time granted the Plaintiff the relief to enter premises of the Defendant to look for evidence without there being a notice to the Defendant. This kind of an order can be passed under the Court’s inherent jurisdiction as a Court of equity and to protect ends of justice. Moreover, the Court also held that such orders could only be granted in exceptional circumstances.

The criteria for exceptional circumstances are that –

• There should firstly be an extremely strong prima facie case.
• The potential or actual damage that can be caused to the Plaintiff is very high.
• There needs to clear evidence that the Defendant has incriminating documents in their possession coupled with a real possibility that the Defendants may destroy the same, before an inter partes application may be made.

In addition, there is a duty upon the lawyers of the Plaintiff to execute the Anton Piller carefully with respect to the Defendant’s right. These same conditions are accepted in India as well, as highlighted by the case of Bucyrus Europe Limited v Vulcan Industries Engineering Company Private Limited. The Court through Columbia Pictures Industries v Robinson further protects the rights of the Defendant especially when their rights are being infringed without even getting an opportunity to state their case.

The Court laid down a few guidelines such as

• The order should be limited to what is absolutely necessary and once they are seized they should be copied and the originals should be returned with a detailed record being kept.
• When the ownership of the property is disputed, the Plaintiff’s lawyers cannot retain the documents seized.
• There is a duty upon the Plaintiff’s lawyers to make full and frank disclosure of all the relevant material.
• While the Plaintiff is executing the order, they should not act oppressively.
• The Plaintiff cannot go beyond the order, i.e. the Plaintiff cannot seize documents not mentioned in the order.

If there exists a failure to follow these guidelines, the Defendant can claim for exemplary and aggravated damages for their legitimate interest.

In India, the purpose of Anton Piller Order can also be served by appointing a commission to make a local investigation under Order 26 Rule 9 of the CPC. The Delhi High Court laid a few guidelines regarding the appointment of a local commissioner –

• An appointment of a local commissioner in software infringement is not to collect evidence but to preserve the infringing evidence. As the evidence of infringement can only be taken from the premises of the opposite party alone and in case the application is not made ex parte, there is a change such evidence may be lost.
• The purpose to have a local commissioner is to serve the ends of justice for which the element of surprise is necessary so that the actual position does not change.
• To grant a local commissioner, strict proof of evidence is not needed. It only needs to pass the test of reasonable and credible information in the light of the normal course of conduct and practice in trade.

It can be said that a possible reason why the test to grant a local commissioner is low as compared to an Anton Piller Order itself, is that the local commissioner acts as an officer of the Court and is a neutral person, so the chances of oppression of the Defendants’ rights are less.

Norwich Pharmacal Order

In order to explain this order, it would be more interesting to do so through the following example – If organization Z is in any way related to a case between X and Y, but not actually a likely part of the case itself, then Y may be able to acquire information from Z. Limitations do exist, and this Order is given only when it is considered to serve the interests of justice. The most common reasons for its use is for the identification of the best Defendant, or as a way to obtain information in order to back up a claim. It can be obtained at any time during a legal action, but cannot be used to affect foreign proceedings.

To explain this Order in simple terms, it is an order from a Court to disclose documents or information that is available in the United Kingdom. This Order first came around when it was granted in 1974 by the House of Lords in the case of Norwich Pharmacal Co. v Customs and Excise Commissioners, a case concerning the alleged violation of a Patent by unknown importers of the chemical subject to that particular patent.

The Norwich Pharmacal Order is granted against a third party to force them to disclose relevant information and documents if they have been innocuously mixed up in the issue at hand. By bringing such individuals to notice, the possibility of the documents and information required to be disclosed is increased, if not definite. When an Applicant initiates legal proceedings against others who are believed to have been a part of wrongdoing detrimental to the Applicant, these documents help the Court to decide its verdict.

The principal users against whom these Norwich Pharmacal orders are used are Internet hosting services and Internet service providers. This is because it helps in identifying users that are being alleged to have had a role in the particular wrongdoing. The House of Lords held that where an innocent third party has information relating to unlawful conduct, a Court could compel them to assist the person suffering damage by giving them that information.

It is highly pertinent to not that these orders are usually asked for and enforced when the identity of the wrongdoer is not actually known. This obviously implies that legal proceedings cannot be initiated, which is why this order enables the process. It gives the right to parties that believe they have been wronged, to apply to the Court for a Norwich Pharmacal order against third parties who would be able to identify the wrongdoer because they ultimately are facilitators of the wrongdoing.

Thus, we see that these three remedies, i.e. Mareva Injunction, Anton Piller Order and Norwich Pharmacal Order are in use and have various groundbreaking abilities to actually help in being a boost to legal proceedings.