In Brigade (BBS-TEK) Limited v Back-Tec Worldwide Ltd and Another  EWPCC 52, the Patents County Court (PCC) dismissed an order for dissemination made by Brigade (as one of several consequential orders to an application for judgment in default) for lack of evidence.
Brigade claimed that Back-Tec had infringed its UK patent GB 2 318 662. Back-Tec denied infringement and contended in defence that the patent was invalid. Pursuant to an order for directions, Back-Tec was required to serve amended statements of case on Brigade. Following Back-Tec’s repeated failure to respond, Brigade made a paper application for Back-Tec’s defence to be struck out and judgment entered in its favour. Brigade also applied for consequential orders in the form of an injunction, delivery up, costs, an inquiry as to damages, additional damages and dissemination of the judgment (a publicity order).
In seeking to determine the circumstances in which it would be appropriate to grant a publicity order, His Honour Judge Birss QC referred to the recently decided case Samsung Electronics (UK) Limited v Apple Inc  EWCA Civ 1339. He noted, however, that the underlying circumstances of that case were inherently different, as they related to a declaration of noninfringement rather than one of infringement. In Samsung v Apple, the Court of Appeal granted the publicity order, but stipulated that the making of such orders should in no way be “the norm”.
In addition, HHJ Birss referred to the provisions of the Enforcement Directive (Directive 2004/48), which sets out the purposes for which a publicity order should normally be made, that is, in the case of a successful claim for non-infringement, where there is a real need to dispel commercial uncertainty in the marketplace, and to act as a supplementary deterrent to future infringers. In particular, HHJ Birss noted that, in Samsung v Apple, importance was placed on the need for the court to be “satisfied that such an order is desirable before such an order is made”.
In light of the ruling in Samsung v Apple, HHJ Birss assessed the application for a publicity order made by Brigade. As the order was for dissemination of a judgment of infringement, it fell clearly within Article 15 of Directive 2004/48 and, prima facie, could be granted. HHJ Birss went on to consider the requirement of the court to be “satisfied” of the need to make such an order. As such, he felt that “in order to have a proper basis for making such an order, some material would need to be placed before the court in support”. HHJ Birss highlighted particularly a distinction between the limited information available in Samsung v Apple (which nevertheless allowed the court to make a decision) and the similarly limited evidence before the Court in the present case, which did not allow him to draw the same conclusion.
Finally, HHJ Birss drew parallels between the circumstances of Brigade’s application and the ruling on declaratory orders established in Wallersteiner v Moir  1 WLR 991, in which Buckley LJ acknowledged the longstanding rule of practice that the courts were not inclined to make declarations either on admissions or in default of pleadings, but that a declaration was a judicial act and, therefore, should only be made if the court was satisfied by evidence. As Brigade’s application formed part of a judgment in default of defence, HHJ Birss considered that the ruling in Wallersteiner v Moir was of potential relevance.
The publicity order was not granted, as no evidence addressing this issue was presented. Brigade was, however, given liberty to apply, on the recommendation that the application be made within a short period of time and be supported by evidence.
Claimants seeking a publicity order as part of wider injunctive relief will be required to provide evidence that allows the court to establish a proper basis for granting the order. It is unlikely that a publicity order would be granted in other circumstances if little or no evidence is submitted that provides the court with a proper basis for making such an order. This appears to be the case even where the injunction follows a declaration for infringement that would otherwise be within the remit of Directive 2004/48 and, therefore, prima facie appropriate.