Injunctions in cases of infringement of IPRs. The Groups are invited to answer the following questions under their national laws:

Transcription

1 Question Q219 National Group: Title: Contributors: Reporter within Working Committee: Date: Ireland Injunctions in cases of infringement of IPRs Gerard KELLY [please insert name] [please insert date]] Questions I. Analysis of current law and case law The Groups are invited to answer the following questions under their national laws: Availability: 1. Are injunctions for infringement of an IPR available on a provisional/preliminary basis? Yes. 2. Are injunctions for infringement of an IPR available on a permanent basis? Yes. Criteria: 3. If yes to question 1, what are the criteria for the grant of an injunction on a provisional/preliminary basis? The granting of injunctions in Ireland is provided for under the various intellectual property statutes 1 for each of the IPRs, but the conditions and modalities of such injunctions are 1. Section 18(2) of the Trade Marks Act 1996 Section 47(1) of the Patents Act 1992

2 based on the common law. Passing-off, a form of unfair competition law, which can protect unregistered trade marks, is purely a common law remedy and is not the subject matter of statutory protection. Preliminary injunctions in Ireland are granted based on the criteria set out in the Irish Supreme Court case of Campus Oil Ltd v Minister for Industry and Energy (No. 2.) 2 These factors, which mirror those set out by the UK House of Lords in the case of American Cyanamid Co v Ethicon Limited 3, are as follows: The IPR holder seeking the injunction must show that there is a fair/bona fide/serious question to be tried. In other words, that the claim is not frivolous or vexatious. The court must then consider the issue of adequacy of damages from two perspectives: (i) first, if the court did not grant the preliminary injunction sought, will the IPR holder who ultimately succeeds at trial be adequately compensated in damages for any loss suffered between the hearing of the preliminary injunction application and the trial of the action. If the IPR holder would be adequately compensated in damages, and the alleged infringer is in a position to pay, then the preliminary injunction should be refused. (ii) secondly, if the court grants the preliminary injunction sought, and the IPR holder is ultimately unsuccessful at trial, will the alleged infringer be adequately compensated in damages. If the alleged infringer would be adequately compensated in damages, and the IPR holder is in a position to pay, then the preliminary injunction may be granted. If damages would not fully compensate either the IPR holder or the alleged infringer, or if payment of damages would not be possible, then the court may consider the balance of convenience. The factors taken into account in determining the balance of convenience will vary from case to case. If the balance of convenience is equally balanced then the court should attempt to preserve the status quo. An injunction is an equitable and discretionary remedy and therefore equitable principles, such as delay/laches, will be relevant to whether a court will grant a preliminary injunction in any given case. In addition, the IPR holder will be required to provide the court with a crossundertaking as to damages, which will be payable to compensate the alleged infringer should a preliminary injunction be granted but ultimately deemed unwarranted at the trial of the action. In respect of passing-off (unfair competition), in particular, the Irish courts have consistently held that the losses that the IPR holder may suffer to its goodwill and reputation if the infringement persists is not quantifiable in monetary terms and therefore a preliminary injunction will normally be granted as damages are not considered to be an adequate Section 127(2) of the Copyright and Related Rights Act 2000 Section 57(3) of the Industrial Designs Act [1983] I.R [1975] A.C

3 remedy (see Mitchelstown Co-operative Agricultural Society Ltd. v Golden Vale Food Products 4 ). Irish Courts appear to have taken the opposite view in respect of patent infringement matters concerning generic pharmaceutical product launches, where damages to the IPR holder are considered to be quantifiable in monetary terms and therefore damages are considered to be an adequate remedy (Smithkline Beecham plc v Genthon BV 5 ). 4. If yes to question 2, what are the criteria for the grant of an injunction on a permanent basis? In Ireland, a permanent injunction is a discretionary remedy which may be granted by the court at the final determination of the case. To obtain a permanent injunction, it must be demonstrated to the Court that there is something to be injuncted on an ongoing basis. Where there is an infringement of the IPR holder s rights, and a threatened continuation of such infringement to a material extent has been established, then the IPR holder will have a prima facie entitlement to a permanent injunction. However, as a general principle of Irish law, Irish courts may refuse to grant a permanent injunction if it is considered that an award of damages alone is a more appropriate remedy. This would be assessed on a case by case basis in accordance with the court s underlying discretion to grant an injunction. One of the main authorities in Ireland on this discretion is Patterson v Murphy 6, an non-ipr infringement case, where the following principles were set out by Mr Justice Costello: When an infringement of the plaintiff s right and a threatened further infringement to a material extent has been established, the plaintiff is prima facie entitled to an injunction. There may be circumstances, however, depriving the plaintiff of this prima facie right but, generally speaking, the plaintiff will only be deprived of an injunction in very exceptional circumstances. If the injury to the plaintiff s rights is small, and is one capable of being estimated in money, and is one which can be adequately compensated by a small monetary payment, and if the case is one in which it would be oppressive to the defendant to grant an injunction, then these are circumstances in which damages in lieu of an injunction may be granted. The conduct of the plaintiff may be such as to disentitle him to an injunction. The conduct of the defendant may be such as to disentitle him from seeking the substitution of damages for an injunction. The mere fact that a wrongdoer is able and willing to pay for the injury he has inflicted is not a ground for substituting damages. The only widely known Irish IPR infringement case where the court granted other relief in lieu of granting a permanent injunction is Falcon Travel Ltd v Owners Abroad Group Plc 7, a passing-off (unfair competition) action. In that case an English tour operator company operating for some time in the UK launched an office and brochure in Ireland under the trade name Falcon. The plaintiff owned a travel agency under the same name and had prior existing rights in Ireland and therefore issued passing-off proceedings. The judge found that passing-off had occurred but was not prepared, based on the facts of the case, to grant a permanent injunction. Instead, the judge granted damages in lieu of the injunction. In coming 4. Unreported, High Court, Mr Justice Costello, 12 December Unreported, High Court, Mr Justice Kelly, 28 February [1978] I.L.R.M [1991] 1 I.R

4 to this conclusion, the judge held that the defendant had acted innocently, but wrongfully. Such damages were assessed at an estimate of the general loss suffered and to be suffered by the plaintiff as a result of the wrongdoing. The quantum of this damages amount was calculated to enable the plaintiff to mount an advertising campaign to inform the public about the differences between the two businesses. 5. If not addressed in answering questions 3 and 4, does the criteria for the grant of an injunction differ depending on whether the injunction sought is on a provisional/preliminary or permanent basis? If so, how? In Ireland, both the granting of injunctions on a preliminary and permanent basis is a discretionary remedy where equitable principles will always apply. The main difference between applying for a preliminary injunction and a permanent injunction is that a court will not consider the merits of the IPR infringement case for the purposes of a preliminary injunction application, only whether a fair/serious question to be tried has been raised. On this basis, it is possible to obtain a preliminary injunction for an IPR infringement that is later discharged at the trial of the action as unwarranted. The consideration of whether damages alone would be a more appropriate remedy to an injunction would be common to both preliminary and permanent injunction applications. 6. Are the criteria for the grant of an injunction equally applicable to infringement of all IPRs? Yes. The general principles for granting preliminary injunctions in Ireland apply to the infringement of all IPRs in the same way. In particular, and by way of example, this was confirmed in the following cases that normal injunction principles apply to preliminary injunction applications for each of the following IPRs: Trade marks: Smithkline Beecham plc v Antigen Pharmaceuticals Ltd 8 Passing-off: B & S Ltd V Irish Auto Trader Ltd 9 Patents: Smithkline Beecham plc v Genthon BV 10 Copyright: Sweeney v National University of Ireland Cork t/a Cork University Press (2000) If no to 6, are there any specific criteria or considerations for the grant of an injunctions for particular IPRs? If so, what criteria apply and to which IPRs? Not applicable. 8. Are there any specific criteria or considerations for particular subject matter, for example, pharmaceutical patents? If so, what criteria or considerations apply to what subject matter? 8. [1999] 2 I.L.R.M [1995] 2 I.R Unreported, High Court, Mr Justice Kelly, 28 February [2001] 1 I.L.R.M 310 4

5 No. For pharmaceutical patents, Irish courts apply the same principles for deciding preliminary injunction applications to patent cases as with all other IPR infringements. Irish courts do not appear to take into account special factors such as a failure to clear the way in pharmaceutical patent matters to the same extent as might occur in other jurisdictions, most notably in England and Wales. In particular, in the leading Irish case of Smithkline Beecham plc v Genthon BV 12, Mr Justice Kelly, whilst acknowledging the clearing the way principle adopted in England for enjoining generic product launches, did not consider that such a principle would affect the court s consideration of adequacy of damages as the primary consideration in granting such preliminary injunctions. Therefore, it appears that Irish courts approach preliminary injunction applications in pharmaceutical patent matters differently to England and that, unlike England, there are no specific criteria or considerations for pharmaceutical patent injunctions in Ireland. 9. Are there any specific considerations relevant to particular IP holders, for example, NPEs? If so, what considerations are relevant and to what IPR holders? The Irish courts have not yet distinguished a case by a NPE by refusing to grant a preliminary or permanent injunction application by such an entity in IPR infringement matters. However, an Irish courts determination on the adequacy of damages during such injunction applications may provide a basis for a future finding that an injunction should not be granted, but this remains untested. Discretion: 10. Is there any element of judicial discretion in relation to the grant of an injunction for infringement of IPRs? If so, how does the discretion apply? All injunctions in Ireland are discretionary remedies, the granting of which are based on equitable principles. An Irish court will only grant an injunction when it is just or convenient to do so and such injunctions will be granted either unconditionally or on such terms and conditions as the court thinks just. This involves an assessment of IPR infringements by Irish courts and whether a preliminary/permanent injunction is warranted on a case by case basis. In certain cases, the Irish courts may impose undertakings on an alleged infringer instead of granting a preliminary injunction for infringement of an IPR. For example, in the case of DSG Retail Ltd v PC World Ltd 13, a passing-off case, the judge did not grant a preliminary injunction but instead imposed undertakings that the alleged infringer was not to open further stores, must inform every customer that the business was not the same as that of the IPR holder and keep weekly records of all sales. Similarly, in the patent case, Smithkline Beecham plc v Genthon BV 14, the court did not grant a preliminary injunction against the launch of a generic pharmaceutical product based, inter alia, on the alleged infringer s undertaking to record sales. Other examples of where an Irish Court has exercised its discretion not to grant an injunction include the case of Symonds Cider and English Wine Co. Ltd v Showering (Ireland) Ltd 15 where a preliminary injunction was refused as the packaging of the alleged infringing product 12. Unreported, High Court, Mr Justice Kelly, 28 February Unreported, High Court, Miss Justice Laffoy, 13 January Unreported, High Court, Mr Justice Kelly, 28 February [1997] 1 I.L.R.M

6 had already been charged and R. Griggs Group Ltd v Dunnes Stores Ireland Company 16 where a preliminary injunction was refused as the Court considered it more appropriate that the action should have been taken against the manufacturer rather than a retailer who was considered to have acted in good faith. In B&S Ltd v Irish Auto Trader Ltd., 17 Mr Justice McCracken refused to grant a preliminary injunction, notwithstanding a finding of passing-off, where the infringer had acted bona fide in extending an established business from another jurisdiction into Ireland and it was likely that any confusion would be limited. 11. Are there any circumstances in which a court must grant an injunction for infringement of an IPR? If so, in what circumstances? No, there are no such circumstances in Ireland. The grant of an injunction is always at the discretion of the court. 12. Are there any circumstances where infringement of an IPR is proved and no permanent injunction is available? If so, in what circumstances? In Ireland, it is possible that a court will find that an IPR infringement has occurred but the Court will not grant a permanent injunction. This decision will be based on a determination by the court that damages alone are a more appropriate remedy. The main Irish authority is Falcon Travel Ltd v Owners Abroad Group Plc 18, a passing-off (unfair competition) action dealt with in response to question 4 above. Scope: 13. Is an injunction granted only against named parties to the infringement proceeding, or is an injunction available more broadly against potential infringers such as customers or manufacturers who are not parties to the proceeding? In Ireland, an injunction can generally only be granted against a named party to the IPR infringement proceedings. For companies, the wording of the injunction can include the unidentified officers and agents of the named company. There may also be provision made in the wording of the Court Order for unidentified persons who are on notice of the making of the injunction in certain circumstances. Such a preliminary injunction was granted by Miss Justice Finlay Geoghegan in the passing-off (unfair competition) case of Contech Building Products Limited v Walsh 19 as follows: Restraining the second and third named defendants and each of them, their servants or agents and any person having notice of the making of the order from selling, distributing or promoting sealant or bonding products with the use of the names Contech, C-Tech, CT7 and CT7 Trans. (emphasis added) The Irish Group also notes developments in the United Kingdom and other common law countries of granting a John Doe Order against unknown infringers at the time the 16. Unreported, High Court, Mr Justice McCracken, 4 October, [1995] 2 I.R [1991] 1 I.R Unreported, High Court, Miss Justice Finlay Geoghegan, 17 February

7 injunction is sought 20 but is not aware of an Irish Court ever granting such an injunction in an IP case. However, it might be possible to obtain such injunctions in Ireland should sufficient facts and circumstances arise in the future but this remains untested. 14. Is there a specific form of words used by your courts to describe the scope of the grant of an injunction? If so, what is the 'formula'? There is no specific formula or wording used by the Irish courts in determining the scope of an injunction. The plaintiff(s) to the proceedings will set out the nature of the relief sought from the court in the originating Summons or Motion and the court may, if it deems it appropriate to grant the injunction, adopt this wording or more appropriate wording in accordance with the court s discretion. Therefore, how the injunction wording is framed will depend on the facts of each individual case and the essence of the order sought. The wording of the order must be clear and certain in its terms so as to be enforceable. An example of the wording used for an preliminary injunction granted by the Irish courts in a trade mark infringement case, Metro International SA v Independent News & Media plc 21, is as follows: An order restraining the defendant: From infringing the second plaintiffs registered trade mark METRO (stylised mark), registered under No , by making available to the public a free newspaper incorporating the word Metro in the name and masthead, or advertising such a free newspaper. An example of the wording used for an preliminary injunction granted by the Irish courts in a copyright infringement and passing off case, Private Research Ltd v Brosnan 22, is as follows: Restraining the defendants or either of them (whether acting by their directors, officers, servants or agents or any of them or otherwise howsoever) from passing-off a publication not of the plaintiff or any colourable imitation of the plaintiff s monthly publication entitled Private Research or any publication based on the format of the plaintiff s said publication. Restraining the defendants or either of them (whether acting by their directors, officers, servants or agents or any of them or otherwise howsoever) from breaching the plaintiffs copyright in the plaintiff s monthly publication entitled Private Research. An example of the wording used for a permanent injunction granted by the Irish courts in an unregistered Community design infringement case, Karen Millen Limited v Dunnes Stores 23 is as follows: 20. See, for example, the English case of Bloomsbury Publishing Company Limited v Newsgroup Newspapers Limited [2003] F.S.R [2006] 1 I.L.R.M [1995] 1 I.R [2008] 2 I.L.R.M

8 IT IS ORDERED that the Defendants their servants or agents or any person having notice of the making of the Order be restrained from selling or otherwise disposing of the Savida top, Savida blue shirt and Savida brown shirt. 15. Is the grant of an injunction referable to the item(s) alleged to infringe the relevant IPR, or may the grant of an injunction be broader in scope? If it may be broader, what is the permissible scope of the injunction? In Ireland, an injunction can specify and restrain an alleged infringer from displaying/selling/distributing particular items alleged to infringe the relevant IPR or the injunction could restrain the defendant from more broadly infringing the IPR holder s particular, and specified, IPR such as a registered trade mark or copyright protected work. Judicial trends and practice: 16. Is there any discernible trend in your country as to the willingness or otherwise of courts to grant or refuse injunctions for particular IPRs or in relation to particular subject matter? Not generally. At present it is considered that, in accordance with the decision in Smithkline Beecham Plc v Genthon BV, 24 Irish Courts will consider damages as an adequate remedy in pharmaceutical patent matters concerning generic product launches. This appears to be a nuance of Irish law when compared to the position in other common law countries, such as England and Wales. 17. What, if any, has been the impact of the ebay v Merc-Exchange decision or any tendency of the courts in your jurisdiction to treat final injunctions as discretionary? Please explain whether the ebay v Merc-Exchange decision has been relied on or cited by your courts, and in what circumstances. Alternatively, or in addition, has there been any legal commentary on any potential implications of the ebay v Merc- Exchange decision in your jurisdiction? The US Supreme Court decision in ebay v Merc-Exchange has not been cited by any judge in any IPR infringement case in Ireland. Therefore it does not appear that the decision has had any impact in Ireland or that there has been any legal commentary on the potential implications in Ireland following the decision. However, Irish courts maintain a discretion in whether to grant, or not grant, a permanent injunction in any event. Therefore, Irish law is to an extent already consistent with the decision of the US Supreme Court. II. Proposals for harmonisation The Groups are invited to put forward proposals for the adoption of harmonised rules in relation to injunctions for infringement of IPRs. More specifically, the Groups are invited to answer the following questions: Availability of provisional/preliminary injunctions: 18. Should there be a test or criteria for the grant of a provisional/preliminary injunction for the infringement of an IPR? If yes, what should that test or those criteria be? 24. Unreported, High Court, Mr Justice Kelly, 28 February

9 Yes. The Irish Group considers that there should be a test for the grant of provisional/preliminary injunctions for the infringement of an IPR. The Irish Group notes that such a test exists in Ireland (and the United Kingdom) as addressed at question 3 above. This test applies equally to all preliminary injunction applications in Ireland and appears to be consistent with most common law countries. The Irish Group sees no reason to deviate from this test, principally on the basis that this has been the practice in common law countries for quite some time and has been consistently applied. If there is to be international harmonisation then the Irish Group considers that it is important that the Court s ultimate discretion to grant or refuse a preliminary injunction remains. 19. If no, what principles should be considered in determining whether to grant an provisional/preliminary injunction? Not applicable. Availability of permanent injunctions: 20. Should there be a test for the grant of a permanent injunction for the infringement of an IPR? If yes, what should that test be? As addressed above, the granting of a permanent injunction in Ireland is done on a case by case basis with no specified test applied by the courts. The Irish Group considers that the granting of a permanent injunction should always remain at the ultimate discretion of the court. However, in that context, there is scope to provide for a test for the granting of permanent injunctions as part of an international harmonised approach, in order to bring further certainty for IPR rightsholders. The four factor test endorsed by the US Supreme Court in ebay v Merc-Exchange of demonstrating that irreparable injury has been suffered, that damages are an inadequate remedy and that the balance of convenience and the public interest warrants the granting of the injunction is broadly in line with the principles considered by the Irish courts in such matters, with the exception of the public interest consideration. The Irish Group considers that it is possible to formulate a similar test for the purposes of international harmonisation but a degree of judicial discretion must be retained to enable each case to be decided on its facts. 21. If no, what principles should be considered in determining whether to grant a permanent injunction? Not applicable. Discretion: 22. In what circumstances, if any, should the grant of an injunction automatically follow a finding of infringement of an IPR? The Irish Group considers that the granting of injunctions should always remain at the discretion of the court. 23. In what circumstances, if any, should the grant of an injunction be denied notwithstanding a finding of infringement of an IPR? The Irish Group considers that the denial of injunctions should always remain at the discretion of the Court. Differences between IPRs: 9

10 24. Should the above test/principles apply equally to all IPRs? Yes. 25. If no, what should any differences be and why? Not applicable. Scope: 26. Should an injunction be granted only against named parties to infringement proceeding, or should an injunction be available more broadly against potential infringers such as customers or manufacturers who are not parties to the proceeding? The Irish Group considers that injunctions should only be available against clearly identified infringers. This can, as is the case in Ireland, extend beyond named parties to infringement proceedings to the extent a court considers it necessary to enjoin, unidentified persons on notice of the injunction (which could include customers or manufacturers), but this should always be subject to a stringent notice requirement. Otherwise uncertainty regarding enforceability may arise. 27. What is the appropriate scope of an injunction prohibiting an infringer from committing further infringing acts? For example, should the injunction relate simply to the IP the subject of the allegation of infringement, or should the injunction be broader in scope? If broader, what is the permissible or desirable scope? The Irish Group considers that an injunction should be limited to specified IP the subject of the infringement proceedings. Summary In general, in Ireland, both preliminary and permanent injunctions are equitable remedies which are granted by Irish courts based on equitable principles and at the ultimate discretion of the court. The factors to be applied in granting a preliminary injunction in Ireland for IPR infringements are the same as in any other case. Irish law provides, in line with the United Kingdom and other common law jurisdictions, that a preliminary injunction will normally be granted in circumstances where the IPR holder has raised a fair/serious question to be tried, damages are not an adequate remedy and the balance of convenience lies in favour of granting the injunction. A permanent injunction will be granted at the discretion of the Irish courts where the IPR holder demonstrates that the IPR infringement is likely to continue on an ongoing basis and that an award of damages alone is not a more appropriate remedy. Unlike the established test for the granting of preliminary injunctions, there is no established test for the granting of permanent injunctions in Ireland save the general principles outlined above and so there is a possibility for international harmonisation in this area in particular, principally to provide more certainty for IPR holders. However, the Irish Group considers that the granting of an injunction for IPR infringement should remain at the ultimate discretion of the Court to decide each case on its facts. 10

11 Résumé En Irlande, en général, tous les deux injonctions préliminaires et permanentes sont des réparations équitables, qui sont accordés par les Tribunaux Irlandais, basé sur des principes équitables et la discrétion de la Magistrature. Les facteurs à appliquer dans l'octroi d'une injonction préliminaire en Irlande pour les violations de la propriété industrielle sont les mêmes qu'avec chaque autre type de cas. Le droit en Irlande prévoit que, semblable avec le Royaume-Uni et d'autres pays de common law, une injonction préliminaire sera normalement accordée dans les cas où le titulaire des droits soulève une question juste ou sérieuse, où les dommages ne sont pas une réparation adéquate et où l'équilibre des inconvénients penche en faveur de l'octroi de l'injonction. Une injonction permanente sera accordée à la discrétion des tribunaux irlandais où le titulaire du droit de la propriété industrielle démontre que l'infraction est susceptible de persister sur une base permanente et que des dommagesintérêts lui seuls ne sont pas une solution plus appropriée. Contrairement au critère pour l'octroi des injonctions préliminaires, il n'y a pas de critère en place pour l'octroi d'injonctions permanentes sauf les principes généraux décrits ci-dessus, et donc il y a une possibilité pour l'harmonisation internationale dans ce domaine, principalement pour donner plus de certitude vers titulaires de droits de propriété industrielle. Toutefois, le Groupe Irlandais estime que l'octroi d'une injonction pour violation de droits de propriété industrielle doivent rester à la discrétion ultime de la Cour de décider chaque cas en fonction des faits. Zusammenfassung Im allgemeinen in Irlandsind sowohl vorläufigen als auch dauerhaften Unterlassungsklagen Heilmittel, die von irischen Gerichten nach billigem Ermessen und gemäß der Prinzipien der Billigkeit gewährt werden. Die Faktoren, die bei Gewährung einer einstweiligen Verfügung in Irland in Fällen im Bereich geistigen Eigentums anzuwenden sind die gleichen wie in jeglichen anderen Fällen. Dem irischem Recht nach, im Einklang mit dem Recht des Vereinigten Königreichs und anderen Ländern mit angelsächsischer Rechtstraditionen, wird eine einstweilige Verfügung in der Regel in Fällen gewährt, bei denen der Inhaber des geistigen Eigentumsrechts eine ernste Frage hebt, Schadensersatz eine nicht ausreichende Abhilfe wäre und das Gleichgewicht der Annehmlichkeit für die einstweilige Verfügung liegt. Eine dauerhafte einstweilige Verfügung wird nach Ermessen der irischen Gerichte gewährt, wenn der Inhaber des geistigen Eigentumsrechts demonstriert, dass er wahrscheinlich ist, dass die Verletzung kontinuierlich fortsetzen wird und dass eine Zuerkennung von Schadensersatz keine angemessene Lösung darstellt. Im Gegensatz zur Gewährung von einstweiligen Verfügungen gibt es keinen etablierten Test für die Gewährung von dauerhaften Unterlassungsklagen, abgesehen von den bereits geschilderten allgemeinen Prinzipien. Es besteht daher die Möglichkeit für internationale Harmonisierung in diesem Bereich, vor allem um großeresicherheit für Inhaber von geistigen Eigentumsrechten zu schaffen. Jedoch, nach Auffassung der Irischen Gruppe, die Gewährung einer einstweiligen Verfügung bei einer Zuwiderhandlung im Bereich des geistigen Eigentumsrechts sollte nach Ermessen des Gerichts auf die jeweiligen Tatsachen entschieden werden. 11