Exparte Interim Relief in Trademark Disputes- Judicial Approach

Preface

To ensure timely and effective enforcement of IPRs, Courts use a variety of tools like injunctions, search and seizure orders etc. These interim remedies play a vital role in ensuring prompt protection of IPRs of the owner. Generally, the Courts are required to give a notice to the opposite party before granting injunctions and interlocutory orders. Sometimes even the slightest delay in obtaining injunction would cause irreparable injury to the plaintiff. In such cases, the Courts may overlook the requirement of giving notice to the opposite party and grant what is called the exparte ad interim injunction. However, the policy is that exparte injunctions are to be granted only where the notice to the infringer would defeat the object of granting the injunction. In the recent case of Cisaco Technologies V. Shrikant 2005 (31) PTC 538 (Del.), Delhi High Court passed exparte injunction order against the infringer. Besides this the Court also passed comprehensive interlocutory order to ensure the prompt enforcement of the Trademark rights of Cisaco technologies.

In the instance case Cisaco technologies were manufacturing and selling routers and switches and other human critical hardware components used in network infrastructure under the trademark ‘CISCO’ and the ‘Bridge Device’ since 1984. It transpired to Cisaco that one Shrikant was importing same products bearing word ‘CISCO SYSTEMS’ along with the bridge device in India. Cisaco filed a petition for the grant of exparte ad interim injunction against Shrikant to thwart the infringing activities of the latter.

Cisaco contended that its products are used in critical networks such as railways, air-traffic control, hospitals, air defences etc. and any defect in the products would cause grave losses to the public at larger. Therefore these spurious products should not be sold in the market.

On perusal of the evidence placed before it, Delhi High Court held that prima facie case for exparte ad interim injunction is made out, as the delay resulting from giving notice to Srikant would defeat the purposes of injunction. The Court also directed the Collector of Customs to notify at all ports that no consignment, other than that of Cisaco be permitted to be imported in respect of routers, switches and cards which bears the trademark ‘ CISCO’ and/or the ‘Bridge device’.

The Court appointed a Local Commissioner to execute the following- to visit and search the premises of the defendant, to take an inventory of all the products bearing the infringed trademark, to break open the locks with police assistance, to retain a sample of the offending product, to prepare an inventory and take into custody all packaging materials, to record statements of the defendant as to the source as well as the destination of the infringing products, prepare an inventory of all books and accounts including the ledgers, cash books, purchase and the sales record, to seize the hard disk of the computer and prepare computer print outs where the records are stored in the computer.

To facilitate the enforcement of law, the Delhi High Court directed the police authorities having jurisdiction over the area where the defendant was located, to render all possible assistance in carrying out the search and seizure order.

In a plethora of cases the Courts have emphasized that exparte injunction should be granted only where grave injury would be caused to the plaintiff or where mandated by public interest. In addition to these two factors the Courts also take into account the time between filing of application and knowledge of infringement on the part of the plaintiff. A case on the point is Albatross Pharma V. Cipla Ltd 2005 (31) PTC 551 (Del). In the instance case, Cipla obtained an exparte interim injunction order form the district Court against Albatross. Cipla filed the application for injunction, after giving Albatross 6-7 months for exhausting the stock of infringing goods. Delhi High Court vacated the order on the ground that waiting period of 6-7 months indicated that no injury would be caused to Cipla if notice of application is given to Albatross.

Several factors influence the Courts in deciding the nature of relief to be granted to the plaintiff. Since the Interlocutory orders may be sometimes decisive in the final determination of the suits, the Courts are generally circumspect in granting exparte orders. However the principles that are applicable in IP disputes should be different from that it ordinary civil suits because of the magnitude of loss that may be caused to the owner.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.