What is a preliminary injunction?
A preliminary injunction is an interim measure that is used to immediately either preserve the status quo or to commit the respondent to take or refrain from taking an action. In cases of intellectual property rights infringements, such injunctions could prohibit the respondent from continuing to use a certain sign or from selling a product allegedly infringing the applicant's IP rights. Any injunction granted will be worded so that variations of the respondents' actions will also be covered, and the injunction shall remain in force until discharged by the Court.
Preliminary injunction proceedings are swift, flexible and cost efficient and they can be granted within days and sometimes even within hours. However, preliminary injunctions are only effective until trial of the issue and as such they must not stipulate a situation that is not reversible by courts at a later stage in proceedings.
Respondents may appeal against the grant of a preliminary injunction and this is commonly achieved by presenting workarounds.
What can preliminary injunctions be obtained for?
Where it appears to the Court to be "just and convenient" a claimant can obtain an injunction to restrain the defendant from infringing pending judgment on the action. Preliminary injunctions cover claims for cease and desist, infringement, information, and confiscation. They may be requested for all kinds of intellectual property rights infringement, whether the case relates to copyright, trademarks , designs, patents or to protect confidential information.
There is a greater reluctance by the Court to grant mandatory injunctions as opposed to prohibitory injunctions. This is because mandatory injunctions are often more likely to cause irremediable prejudice than cases in which the defendant is merely prevented from taking or continuing some course of action.
What are the requirements for filing a request for a preliminary injunction claim?
In order to obtain a preliminary injunction claim the applicant must;
- satisfy the legal test; and
- provide a cross-undertaking in damages.
The American Cyanamid test
In 1975, in the American Cyanamid case, the House of Lords established the test for the granting of preliminary injunctions. The test comprises of three limbs:
- is there a serious question to be tried?
- the balance of convenience; and
- the case for the status quo.
Serious question to be tried
The applicant has to show that there he has a real prospect of success, but not that he will succeed. The Court must be satisfied that the claim is not frivolous or vexatious, and that there is a serious issue to be tried.
Balance of convenience
This is the most difficult limb for the applicant to satisfy. Here, the applicant needs to persuade the Court that damages at trial would not be adequate compensation and that the defendant will be adequately compensated by a cross-undertaking in damages for any losses incurred if it is found at trial that the injunction was incorrectly granted.
If there is a question surrounding either of these arguments, the Court may take other factors into account. These may include the relative strength of the parties' cases, whether the infringing act has already occurred, the extent to which the parties are established in business, the parties' ability to pay damages and if there has been any unnecessary delay in making the preliminary injunction application.
If other considerations are evenly balanced, the Court will usually endeavour to maintain the status quo.
Cross-undertaking in damages
An injunction will be granted only if the applicant provides an undertaking to the effect that if it is found at trial that the injunction was incorrectly granted and the defendant has not committed or would not have committed an act prohibited by the injunction, the applicant will pay the respondent damages for any losses incurred as a result of the incorrectly granted injunction. This can amount to a very significant amount of money in large cases.
Do you have to contact the respondent before filing a request for injunction?
Applications for preliminary injunctions are usually made directly to the High Court and can be made on notice or without notice (inter partes or ex parte).
The Court will expect an application to be made on notice unless there is good reason not to. Moreover, it is good practice to try to seek an undertaking from the potential respondent to refrain from committing the relevant acts before pursuing an application for a preliminary injunction, again unless there is good reason not to. Good reasons may include if there is a risk that the respondent will simply destroy evidence or take other measures to frustrate a Court order.
Where good reasons exist, an application can be made and heard without notice. However, in this case there are additional rules and requirements as described below.
In other situations the applicant may have no objection to the respondent knowing of their application, but urgency or other factors mean they cannot give the full three days' notice to the respondent that is required by Court rules. In this situation, the application should still inform the respondent to allow them to attend the hearing at short notice if they wish, but the hearing is still procedurally largely considered to be without notice.
Which Court has jurisdiction to grant an injunction?
The Senior Courts Act 1981 states that the High Court may by order, whether interim or final, grant an injunction in all cases in which it appears to the Court just and convenient to do so.
What are the proceedings when requesting a preliminary injunction?
As discussed above, at the outset it is good practice to seek an undertaking from the potential respondent to refrain from committing the relevant acts before pursuing an application for a preliminary injunction. However, in some cases it is better to refrain from sending a warning letter to the respondent.
Preliminary injunctions are permitted under Civil Procedure Rules ("CPR") 23 and CPR 25 which also establish the procedure for an application. Any application for a preliminary injunction should be made without delay after the applicant learns of the infringement or pending infringement. Delay is a strong factor against the grant of a preliminary injunction – and applications are likely refused by the Court if there has been a delay without very good reason.
Applications for a preliminary injunction are usually made directly to the High Court with an application notice (Form N244), and at this stage the applicant specifies if the application is on notice or without notice. The application notice must state the order the applicant seeks, the date, time and place of the hearing and the reasons why the order is sought. It is possible to have an injunction granted without a hearing ("on the papers") but the Court will generally wish to hear oral argument. In cases of extreme urgency, the application notice process can be bypassed and a special telephone hearing arranged within a few hours even outside Court hours.
On notice applications
If the application is made on notice, it should be accompanied by a supporting witness statement and a draft of the order sought. Copies of the application notice, evidence and the draft order should be filed at Court together with payment of the relevant fees. According to CPR 23, these documents should be served on the respondent at least three days' before the hearing of the application. The respondent may file evidence in response. It is important that only means of evidence that are present are allowed – meaning only evidence that can be assessed immediately and for which the Court does not need to take any further action to obtain.
Usually on notice applications can be heard quite quickly – within a couple of weeks if necessary.
Without notice applications
In the case of a without notice application, the same documents should be prepared by the applicant, however, full and frank disclosure is required in the applicants' evidence. This means that the applicant must provide details of any issues that the respondent may have made to the Court if it was present. The applicant must also provide reasons that justify the application being without notice.
Any injunction granted in this way will be made on a temporary basis (perhaps for a few days or a week or so) and the Court will usually set a "return date" for a second hearing where the respondent will be invited to file evidence in response and challenge the injunction. In the meantime the applicant must undertake to provide respondent with the written evidence, the order of the Court and a contemporaneous note of the hearing.
Without notice applications can be heard quickly if necessary, frequently within a few days, but the applicant will need to address the need for urgency in its evidence.
What are the proceedings after the preliminary injunction has been issued?
As described above, the applicant should provide a draft of the order sought when making an application. However, the Court may make amendments to this order during a hearing. A decision on the wording of the order will almost always be made during the hearing, and the order can then be sealed by the Court. A Court will not award a preliminary injunction if it cannot be worded in a way to make it clear exactly what it covers.
If the respondent is represented at the hearing, they will be bound by the injunction immediately.
If the respondent is not represented, it is for the applicant to affect service not the Court. The applicant will be required to give an undertaking to serve the injunction as soon as practicable, and has no discretion to change its mind.
Will the other side get informed if a preliminary injunction request is denied?
If the preliminary injunction request is denied in without notice proceedings the respondent will normally not be informed about the fact that the applicant requested an injunction against him.
If the Court orders an oral hearing before deciding upon the request the respondent will be summoned to the hearing and thereby become aware of the request.
How can a preliminary injunction decision issued by English court be appealed?
As described above, if a preliminary injunction is granted without notice, the Court will set a return date at which both parties are to be heard. This is not a formal appeal but allows the respondent to present its arguments.
If the hearing was on notice, or following the return hearing above, either party can request permission from the High Court to appeal to the Court of Appeal. If permission is not granted, the party can seek permission to appeal from the Court of Appeal itself. The appeal must be filed within 21 days. If the preliminary injunction was granted, the appellant can request it be stayed pending appeal, but this is rarely done. However, the Court of Appeal can hear appeals on an expedited basis (within a few weeks or even days) if there is good reason to do so.
Differences between final and preliminary injunctions?
A preliminary injunction is a provisional measure taken at an early stage in the proceedings, before trial and any final decision on the merits of either side's case. It remains in force until discharged by the court. The preliminary injunction is intended to prevent injustice pending trial. In contrast to this, a final injunction continues after the conclusion of proceedings and is granted to last perpetually or until a specified date. To obtain a final injunction, the claimant's case must be proved on a balance of probabilities (a higher burden of proof than for a preliminary injunction).
Can preliminary injunctions from the UK be enforced in other countries?
With respect to Community Trademarks and Community Designs, UK courts may issue injunctions with effect over the whole of the EU (or at least all Member States where infringement takes place). Broadly similar requirements are laid down in the Regulation on Community Trade Marks (CTMR) and the Regulation on Community Designs (RCD).
Outside these areas, UK courts are reluctant to grant preliminary injunctions that are effective beyond UK borders. Equally a UK court is unlikely to recognise a preliminary injunction granted in another member state without an oral hearing first.
What are the consequences for infringing a preliminary injunction?
A preliminary injunction is an order of the Court and so it would be contempt of Court for a respondent to breach the injunction. Contempt of Court can result in a fine, imprisonment or sequestration of assets
Can protective briefs be submitted?
Protective briefs aim to prevent a Court issuing an ex parte injunction without having heard any arguments from the defendant. This brief contains arguments in defence for an alleged infringement case that might be filed by another party.
Protective briefs are unavailable in the United Kingdom.