Wednesday Law Report: Grant of wide injunction was not automatic

3 February 1999 Coflexip SA and another v Stolt Comex Seaway MS Ltd and others Chancery Division, Patents Court (Mr Justice Laddie) 29 January 1999

IN AN action for infringement of a patent, the court would not automatically grant a wide injunction to restrain the defendant from infringing the patent in suit, but might only grant more restricted relief, tied to the acts of infringement alleged and proved against the defendant.

The court, having earlier given judgment for the plaintiffs in their patent action against the defendants, declined to grant an injunction simply to restrain infringement of their patent, but limited the injunction to the acts of infringement proved.

It was argued for the plaintiffs that in the patent field the general form of injunction was the standard form and had been so for a very long time, and that the practice should not be overturned lightly.

Richard Miller QC and Justin Turner (Clifford Chance) for the plaintiffs; Anthony Watson QC and Thomas Hinchliffe (Bird & Bird) for the defendants.

Mr Justice Laddie said that whenever a court granted permanent injunctive relief at the end of a trial the purpose should be to give effect to its judgment on liability. The injunction granted should protect the plaintiff from a continuation of the infringement of his rights by the threatened activities of the defendant. The injunction must also, however, be fair to the defendant.

The purpose of the injunction was to restrain threatened breaches of the plaintiff's rights. In at least one patent case, Raleigh v Miller (1949) 66 RPC 23, an injunction had been refused where there had been only one act of infringement and the judge thought that the defendant did not intend to infringe anybody's rights. A similar course had been adopted in trademark and passing-off cases.

In virtually all patent actions the alleged infringement would occupy just a small part of the monopoly secured by the patent and its claims. The effect of a broad injunction would be to restrain the defendant from doing things he had not threatened to do, might never have thought of doing, and might not be capable of doing.

The reluctance of the courts to grant imprecise injunctions had been commented on particularly in relation to breach of confidence actions and where mandatory injunctions were in issue. An injunction should be expressed in terms which made it clear what the defendant could and could not do.

The question of clarity was tied to the issue of enforcement. What would happen if the defendant wished to operate a new process or make a new product which, though different to the subject of the original proceedings was still arguably within the scope of the patent? The issue of infringement would already have been decided against him in the original proceedings and thus be res judicata but that was not so in relation to the new product or process. If he went ahead and adopted the new process or product, he ran the risk of sequestration, fines, or, in the case of a personal defendant, imprisonment for contempt of court.

It would be wrong to change a settled practice on a whim. In the area of equitable relief, as in all others, judges were meant to apply uniform standards and uniform principles. The fact that broad injunctions had been granted in the past did not mean, however, that it was impermissible to look afresh at the basic principles. If such a reassessment suggested that the standard form of relief in the circumstances of a particular case was inappropriate, it would be wrong to grant it, no matter what its pedigree.

Whilst in cases of flagrant infringement of copyrights or trade marks, wide injunctions might be the only reasonable way of giving plaintiffs the protection they needed, to go from that to the general proposition that all infringers of intellectual property rights were to be treated as devious and that plaintiffs needed much wider orders in intellectual property cases to protect them against future ingenious, but yet unthought of, acts of infringement was unjustified.

Kate O'Hanlon,

Barrister

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