CMS Expert Guide on Preliminary Injunctions in IP in England & Wales

Any kind of IP claim is theoretically able to be the subject of a PI, which can either restrain the respondent from taking certain actions or more rarely, mandate they take certain actions. The applicant must show urgency and that they have met the required legal standard (see below).

No.

No, but a delay in application generally harms the applicant‘s case. Time taken up making reasonable enquiries is allowed. Delaying more than two months would make getting a PI very unlikely.

Generally, from a few days to weeks. In extremely urgent cases, they can be obtained within hours.

Yes. The court has a wide discretion to stay (suspend) (for example, to give the respondent time to make arrangements to meet the injunction) or discharge or vary it.

The evidence presented must be sufficient to show the legal test for a PI has been met. This consists of three questions:

• Whether the applicant has a serious issue to be tried;
• Whether an award of damages would be an adequate remedy to either party; and 
• Whether granting or withholding the injunction would create irremediable prejudice to either side, and in what amount (the “balance of convenience”).

The court will take all the circumstances into account when deciding the second and third questions. In the event of the parties having an equally good argument to the balance of convenience, the court will tend to maintain the status quo.

The court will also consider “special factors” such as the public interest and the effect of the injunction on non-parties.

Yes – an application can be made without notice if giving notice would enable the respondent to take steps to defeat the purpose of the injunction, or there is no time to give notice before the injunction is required to prevent the threatened wrongful act. In either case the applicant must give “full and frank” disclosure, raising all matters the respondent would have made had they been present.

Yes. Generally, the loser of a contested injunction application pays the costs. It is common practice to make orders for costs which are immediately payable in contested PI proceedings and for the court to make an order for interim payment pending a detailed assessment.

Or, the court may decide to award “costs in the case”; this means the costs are awarded in favour of the overall “winner” once the case has been tried at a final hearing.

Yes. Generally, the loser of a contested injunction application pays the costs. It is common practice to make orders for costs which are immediately payable in contested PI proceedings and for the court to make an order for interim payment pending a detailed assessment.

The applicant and respondent may appeal ([in an IP case ] to the Court of Appeal. A respondent can also apply to the instant court to vary or set aside the injunction, if circumstances change or new information comes to light, or if the PI was granted ex parte.

A person who is not a party but who is directly affected by any order may also apply to have the order set aside or varied. 

It depends on the complexity and size of case and how urgent the matter is. The hearing itself will typically not last longer than a day.

It depends on what is ordered by the court. It is common practice to briefly delay the entry into force of a PI to allow the respondent to make the necessary arrangements to meet it.

Notification:  The applicant may notify the court that issued the order of the respondent’s failure to comply. In response, the court may direct that the relevant action be carried out by the applicant or by another person appointed by the court. The court may also order the respondent to bear the costs associated with carrying out the action.

Order for committal for contempt of court (applicant can apply for this or court can make an Order for Committal itself). The person in breach of the order may be imprisoned/fined/have their assets seized.

Writ of Sequestration: Sequestrators may take possession of property belonging to the party against whom the writ is issued until they comply with the court order (CPR 81.10(4).

Yes. 

Yes.