“The caterpillar does all the work, but the butterfly gets all the publicity”.
Protection of a person’s work, that emanates from their intellect is the object behind implementation of the Intellectual Property Laws. The key aspect that makes one’s intellectual property (“IP”) eligible for protection, is its uniqueness and exclusivity. Since its necessary for an owner of such IP to retain these two factors, it becomes obligatory on him to protect it from being stolen.
In a scenario, where the owner of such IP encounters its infringement or counterfeiting, what is required of him is to act promptly and swiftly. Therefore, more often in intellectual property (“IP”) disputes, the Plaintiff first and foremostly seeks injunction from the Court against the alleged act of infringement by the Defendant.
The Plaintiff may seek following forms of injunction during the suit of infringement:
Anton Piller Order;
Mareva Injunction; and
Norwich Pharmacal Orders
Anton Piller Order: Nuclear Weapon of Law
Anton Piller order is often called as the nuclear weapon of Plaintiffs in law. The reason behind this is that this remedy has tremendous powers and promises quick and one- step solution to the problem of Plaintiff- infringement of his IP.
Anton Piller orders are a form of civil search warrants that help preserve evidence. The aggrieved approaches the Court in an urgency and seeks inspection and raid of the premises of the alleged wrongdoer without prior notice, in order to find and preserve evidence that it believes would otherwise be destroyed.
A Court Commissioner can be appointed by this exparte order to visit the Defendant’s premises and search and seize the infringing goods.
In order to maintain the element of surprise and ensure preservation of requisite evidence, the order is passed without hearing the alleged wrong doer or the opposite party.
Mechanism of the Order: Laws and Implementation
The Anton Piller Order was first issued in the case, Anton Piller KG vs Manufacturing Process, (1976) 1 All ER 779, where the Court differentiated the remedy from normal search orders, requiring service of orders and permission of the Defendant and laid down foundation of the law. It is after this case, that this form of order was recognised and named as Anton Piller Orders.
The Court in the above case also laid down the following factors which are to be taken into consideration while issuing the Anton Piller Orders:
There must be strong prima- facie case in favour of the Plaintiff;
Damage, potential or actual, must be of serious nature;
There must be presence of clear evidence that the Defendants have in their possession incriminating documents or things and that there exists a possibility that they may destroy such evidence before any other legal action is taken against them;
The passing of such order, should do no harm to the Defendant or his case.
Lord Denning in the above case also clarified that the orders do not empower the Plaintiff to forcefully enter the premises, even though any such refusal by Defendant for entry, would be treated as contempt of court.
In Universal City Studios Inc vs Mukhtar & Sons, (1976) 2 All ER 330, it was observed that even if Defendants were wholly ignorant of the Plaintiffs’ rights, they should not object to handing over the infringing articles for safe custody.
Article 50 of the TRIPS Agreements authorises the judicial bodies to order prompt and effective provisional measures so as to preserve relevant evidence in regard to the alleged infringement. It also authorises such judicial authorities to adopt provisional measures, where any delay in action is likely to cause irreparable harm to right holder or where the risk involves destruction of evidence. Such provisional measures may be adopted inaudita altera parte, i.e., without hearing the other party.
In India, the law that protects IP are bifurcated into several statutes, such as The Trade marks Act, 1999; The Patents Act, 1970; The Copyright Act, 1957; The Design Act, 2000; The Geographical Indications Of Goods act, 1999; The Protection of Plant Varieties and Farmers Rights Act, 2001; The Semiconductor Integrated Circuits Layout- Design Act, 2000 and The Biological Diversity Act, 2002.
Each of these Acts lay down specific provisions for initiating the enforcement of the rights of the owner of the IP and also provide remedies in case of infringement. The Trade marks Act under Section 135 provides for remedy in form of Anton Piller Order. Further, the Code of Civil Procedure, 1908; backs the remedy under Order 39.
With the aim to ensure that the orders of the Court are implemented in a legal manner, the Court appoints a commissioner, usually an advocate, to accompany the Plaintiff to the site of the Defendant. Such commissioner is appointed under Order 26 of the Code of Civil Procedure.
However, even though, there have not been a lot of case laws which discuss the aspects of Anton Piller Order, one of the earliest cases that dealt with its concept was National Garments vs National Apparels, (1990) PTC 98. The case pertained to grant of interlocutory injunction for restraining the Defendant from doing business under the trade name under dispute. The court observed that in extremely urgent cases an exparte injunction may be obtained before full hearing of the motion or an Anton Piller Order, for inspection of the Defendant’s premises without prior warning and discovery of his records, may be obtained. The Court also observed that an Anton Piller Order is similar to the exparte interlocutory order to take an inventory of the articles etc. passed in an ordinary suit.
In Shiv Kumar Chadha Vs. Municipal Corporation of Delhi, (1993) 3 SCC 161, the Hon’ble Supreme Court emphasises the necessity of laying down reasons before issuing any exparte orders.
Further the Supreme Court, in Gujarat Bottling Co. Ltd. vs. Coca Cola Company, 1995(5) SCC 545 observed that an interlocutory injunction should fulfil the object of protecting the plaintiff against injury caused by violation of his right, which cannot be monetarily compensated by way of damages.
Further, Justice Ashok Kumar Ganguly, in Bucyrus Europe Ltd vs Vulcan Industries Engineering Co Pvt Ltd, 2005 (30) PTC 279, observed that an Anton Piller Order is to be passed for preservation of evidences. The Court also mentioned about the safeguards that have to be provided while granting Anton Piller Order, like an undertaking by the Plaintiff to compensate the Defendant for the losses he wrongly suffered. While granting the Anton Piller Order, the balance of convenience has to be in favour of the Plaintiff, which means that mischief or inconvenience which is likely to be caused to the Plaintiff if the injunction is not granted versus the inconvenience that is likely to be caused to the other party if such an injunction is granted, has to be compared. The Plaintiff should suffer an irreparable injury if no such injunction is granted. The irreparable injury has to be of such material form, which cannot be otherwise adequately remedied or quantified in form of claim of damages.
Blueprint for the aggrieved
With the efficacy to deliver quick results the Anton Piller Order has become one of the most sought-after remedies in IP infringement suits and counterfeit proceedings. In ordinary circumstances, where a regular suit in the Court of law might take years to decide and often leads to tampering of evidences, Anton Piller Order ensures both, preservation of such evidence as well as initiation of immediate action against the Defendant. Just like a painkiller quickly address the head ache, Anton Piller Order serves a swift solution to the problem of infringement as well as counterfeiting, i.e., procuring of incriminatory evidence against the Defendant.