In many cases, a Claimant whose copyright work has been infringed will not only wish to obtain relief for the damage and loss suffered but also wish for the court to grant injunctive relief. An injunction in the context of intellectual property is where one party can ask the court for it to prevent an imminent infringement, or to forbid the continuation of the alleged infringement. An injunction must also be effective, proportionate and dissuasive and should be applied in such a manner as to avoid the creation of barriers to legitimate trade. These are requirements as set out in legislation.
Usually, a Claimant will submit that it is entitled to an injunction to restrain the Defendant (whether acting directly or indirectly by procuring or encouraging others to act) from infringing the copyright works, registered UK Trade Mark and the Community Trade Mark, and from passing off its goods and services as and for the Claimant’s.
There must also be no special reason not to grant an injunction but note that just because a Defendant claims to have stopped is not always sufficient to prevent a court from granting this. This is indeed applicable where a defendant says it has stopped but refuses to sign an agreement (called undertakings) that it will not infringe again. In the case of EMI (IP) Ltd v British Sky Broadcasting Group Plc, the words “special reasons” in the context of Article 104 of the TM Regulation were said to relate to the factual circumstances specific to the given case. This is an interesting case and would need consideration if you wish to apply to the court for injunctive relief.
A Claimant will still argue in its application to the court for an injunction that it is not unreasonable to seek such relief where the Claimant’s main source of revenue stems from its trade marks or copyright works. Online trading is a key point to note on this, especially when considering the well-known case of Twentieth Century Fox Film Corporation v Newzbin Ltd. In this case, the activities of members on a website that acted as an intermediary for its members to download and share films. By illegally making the copyright works available to the public in this regard, it cut off online revenue for Twentieth Century Fox. The conduct of the Defendant will be considered by the court as well so worth noting when making this application.
It is not as clear cut as the above though and usually the Defendant will argue that an injunction is a discretionary remedy and in respect of the passing off, where there is no risk of a continuing infringement, there should be no injunction granted. It is true that an injunction is a discretionary remedy, however the court will be concerned to ensure that any injunction is appropriate and proportionate in the light of all the facts in the case. A final injunction will normally be awarded by the court where an infringement has been established, and the defendant has demonstrated an intention to engage in an infringing activity.
However, it will not be awarded where it appears from all the circumstances that the wrongdoer does not threaten or intend to repeat the acts of infringement. Note, the court will unlikely have sympathy for a Defendant who has not been genuine or clearly difficult when the request for an undertaking is put to it and they just ignore it. Especially when legal proceedings are commenced it is important to show you are willing to dispose of the matter fairly and amicably without the need for judicial intervention. The Claimant is also entitled to protection where there has been a clear infringement and the copyright works and/or trade marks are critical to the Claimant’s reputation and their business revenue. In most case, if the defendant has declined to give an undertaking to agree to the terms set out by the Claimant then this would take the case outside the norm. It is perfectly reasonable for the Claimant to question why the undertaking was refused if there was no intention to repeat the infringement.
Lastly, if the Claimant has a concern that this infringement is extending beyond the territory of which it has sought court intervention then it may wish to apply for a worldwide injunction. This is tricky and will take further consideration from the court to determine any jurisdiction issues and may result in the Claimant having to apply to various territories to implement this right within their jurisdiction. However, if a Defendant is based in one particular territory and trades through the internet, the court could apply the injunctive relief decision from within its jurisdiction and in turn would prevent use everywhere.
If you have any questions on the above or wish to discuss any concerns you have with your copyright works or trade mark being infringed, contact us via email or through the website and we shall call you back.