Preliminary injunctions

UK

While main proceedings often take years, preliminary injunction proceedings can resolve trade mark disputes quickly and (in many cases) for relatively moderate cost.

In the UK, preliminary injunction (PI) proceedings are a powerful and expedited means of deterring and stopping trade mark infringement. They can be a means to an end: precipitating settlement discussions and leading to enduring resolution. A PI application may be made at any time, including before proceedings are started (although this is only if the matter is urgent or it is otherwise in the interests of justice to do so).

Urgency

Obtaining a PI is dependent on:

  • there being a serious issue to be tried (a low bar which is usually met if the claim is not frivolous or vexatious)
  • damages not being an adequate remedy
  • the balance of convenience lying in the applicant's favour, and
  • there being urgency and, correspondingly, no undue delay.

If the claimant delays without due justification, the court will likely consider there is no urgency. However, there are no hard and fast rules about what constitutes 'urgent' and the assessment will turn on the facts of the case.

  • In Ukelele Orchestra of Great Britain v United Kingdom Ukelele Orchestra [2014] EWHC 3789 (IPEC), it was held that, of all the issues to consider when granting a PI, "the most significant is delay" (Judge Hacon). Here a claimant's application failed as they had known about the defendant's activities for at least four years before making the application and PI and there had been a two-month delay between the event that should have triggered the initiation of proceedings and the letter before claim.

  • In Blinkx UK v Blinkbox Entertainment Ltd [2010] EWHC 1624 (Ch) there was a 12-month delay from the time the claimant knew of the defendant's actions to when the action was initiated and interim relief sought, a timespan which the judge called "wholly unreasonable and completely unjustifiable" and "fatal to the grant of interim relief".

Remedies

  • PIs are not granted where damages would be an adequate remedy in place of granting the PI. However, applicants can still seek a PI in cases where damages are being claimed.

  • A PI is forward-looking and aims to 'hold the ring' until the full trial takes place, providing interim injunctive relief rather than a final remedy. Conversely, damages compensate the claimant for losses incurred or sure to be incurred.

  • Applicants for PIs are required to give cross-undertakings in damages to the respondent against whom the injunction is being sought. These require the applicant to compensate the respondent for any loss suffered if it later transpires the injunction was wrongly granted against the respondent.

Evidence and level of proof

Preliminary hearings should not be conducted as 'mini trials' and, accordingly, courts tend to limit the nature and volume of evidence that is put forward by parties in a PI application.

As above, the standard of proof is governed by the following principles:

  • There should be a serious issue to be tried.

  • The applicant must show that damages would not be an adequate remedy (this often requires showing irreparable harm would occur to the applicant if the PI were not granted).

  • The balance of convenience must lie in favour of the applicant – if the harm of the PI would disproportionately harm the respondent, this would tend against granting a PI.

Remedies

PIs are limited to specific types of claims, primarily those seeking injunctive relief. Claims related to damages, for instance, fall outside the scope of PIs. Main proceedings do not need to be already pending for the issue of a PI; they can be initiated simultaneously or at a later date. In practice, 'standalon requests for PIs are more common.

Evidence and level of proof

  • Means of evidence are more limited, with affidavits often providing the most valuable evidence.

  • In PI proceedings, the facts presented by the parties only need to seem more likely than not upon initial review to be accepted. The same level of proof is not required as in main proceedings, where judges need to be convinced beyond a reasonable doubt. For more on the means of proof and typical time frame of preliminary injunction proceedings, please see section X above.

  • Irreparable harm is generally not needed for a PI under German law.

Ex parte injunctions

  • A PI can be issued without notice in extreme situations. Here, the respondent will not be present or represented at the preliminary hearing, although the applicant is bound to notify them of the ex parte hearing shortly after it has taken place. Ex parte PIs present a huge benefit to applicants insofar as they preserve the status quo (as the respondent is not put on notice to disrupt it). However, the burdens are correspondingly sizeable: the requirement for full and frank disclosure by the applicant comes with stringent rules, and the PI is usually granted on a temporary basis with a return date for a later, expedited, inter partes hearing.

Effect

  • The effect of a PI is, ultimately, to safeguard an applicant's legal rights by mandating or prohibiting an action by a party, pending final judgment in a case. This 'action' must be precisely defined so that the preventee knows with enough specificity what they are compelled to do or prevented from doing.

  • A PI is immediately effective upon being granted and remains so until further court order or final resolution. It is legally binding and there may be sanctions for non-compliance – eg proceedings for contempt of court.

  • If the court has granted a PI and the claim is stayed, other than by agreement between the parties, the PI shall be set aside (unless the court orders it should continue to have effect). If a PI is granted in a claim to a claimant, or in a counterclaim to a defendant, and the claim/counterclaim is struck out for non-payment of certain fees by the claimant/defendant, including non-payment of the trial fee, the PI shall cease to have effect 14 days after the date that the claim/counterclaim is struck out, unless the claimant/defendant applies to have the claim/counterclaim reinstated.

Appeal opportunities

  • If a PI is ex parte, the court sets a return date at which both parties will be heard. This is not technically an appeal but rather lets the respondent set out its evidence (insofar as not previously disclosed by the claimants) and arguments.

  • If a PI is granted inter partes, either party can request permission to appeal from the High Court or Court of Appeal. The appeal must be filed within 21 days. If the PI was granted, the appellant can ask for it to be stayed pending the appeal process, although this rarely happens in practice. Appeals can be expedited through the Court of Appeal where necessary, sometimes in a matter of days.

  • Araci v Fallon [2011] EWCA Civ 668 was a breach of contract claim in which the claimant sought an injunction preventing the defendant jockey from riding another horse in the Epsom Derby (an existing agreement was in place for Mr Fallon to ride a particular horse for Mr Araci). The Court of Appeal permitted an injunction preventing the defendant from riding the competitor horse as damages would not be an adequate remedy for breach of contract (owing to the prestige of the event). The appeal process was expedited due to the time sensitive nature of the Epsom Derby. It is often cited as an example of the court's ability to usher appeals processes through where delay could render a decision futile (ie in this case the Derby going ahead pre-appeal hearing).

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