INTELLECTUAL PROPERTY INTERIM INJUNCTIONS: A PRACTICAL GUIDE Kevin Glover, Shortland Chambers

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,

YearGrantedDeclined

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 [2012] 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 [1975] AC 396 (HL)  Klissers Farmhouse Bakeries Limited v Harvest Bakeries Limited [1985] 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 [2012] 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  NZLS seminar, Cull and Kos (2000)