Efficacy of IP enforcement, remedies

In this 60th instalment, we interrogate the efficacy of Zimbabwe’s intellectual property (IP) laws with respect to enforcement and available remedies.

Report by Richard Pasipanodya

Conceptualisation
Axiomatic or universally-acknowledged is that obtaining a registered IP title is meaningless unless there are complementary statutory provisions to protect and safeguard those interests.

This menace strides across the entire spectrum and spheres of human endeavour and creativity. Accordingly, those who suffer more would be the innocent consumers and end-users of fake products. Thus the law must provide for adequate and effective protection mechanisms and procedures for all categories of IP titles, which Zimbabwe has managed to craft.

Legislative context
Prior to the advent of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), our IP laws did not provide for expansive provisions against infringing conduct.

Article 41 of the TRIPS Agreement obliges all member states of the World Trade Organisation (WTO) to provide for fair, effective and adequate mechanisms against infringement, coupled with expeditious remedies.

Towards this end, our laws underwent comprehensive yet so robust updates in compliance with TRIPs obligations. For our purpose we shall dwell on the Patents Act as these matters embrace all branches of IP.

Section 24 of the Patents Act bestow the patentee with full power, sole privilege and authority to commercially exploit the invention, whether by themselves, their representative or licencee in such a manner as they deem fit, so that the patentee would enjoy the whole profit and advantages that accrue to them from the commercial exploitation.

These exclusive monopolistic rights include the making, use, offer for sale, sale and importation for purposes of patented invention in Zimbabwe. Thus, any third party who indulges in any one of the above acts commits infringement.

Parallel importation
By amendment, Section 24A of the Patents Act specifically introduces parallel importation into Zimbabwe’s jurisdiction. By these provisions, where the patentee places the patented product in another country’s jurisdiction, their monopolistic rights over these same products are thereby extinguished.

That is to say, any third party may import for sale the same products into the local market without infringement, provided the cost of importing these products is lower than the cost of manufacturing these on the local market. This provision has as its aim limiting the patentee’s dominant position while simultaneously ensuring that the local market has access to a variety affordable of products.

This should be applauded. However, is it accessible to the infringer and the public in general? Remembering that by and large Zimbabweans have very little understanding of not only patents, but the entire regime of IP laws, it would thus be overambitious to assume that these provisions would suddenly be appreciated.

Talk of the Companies Act provisions and you would find the majority of small scale dealers would only be able to ask for a shelf company without even attempting to read and comprehend the Companies Act itself. In their opinions it is enough just to have the requisite memoranda and articles of association, the CR 14, CR 6 forms and the certificate of incorporation.

Anton Piller orders
This doctrine, whose origin was the UK in the famous case of Anton Piller KG vs Manufacturing Processes Ltd and Others (1976), soon spread to many other jurisdictions, including the US and our neighbour South Africa. It is an interlocutory remedy, that is to say, Anton Piller orders are injuctions issued pending litigation.

It entails acquiring (or is it seizing?) or conserving information that would be important in the contemplated action for infringement.

The order normally consists of four aspects, these being:

A mandatory injuction to release the offending materials to the applicant;
Inspection of the infringer’s premises;
Disclosing the infringing articles, their suppliers, their customers and the amount of profits obtained from such infringement, and
Delivery of the infringing materials into hands of the applicant for safe-keeping.

The essence of this legal remedy is that the respondent is caught unawares before they can find time to either hide, dispose of or destroy the incriminating articles. That is why it is instituted by manner of an ex parte application, ie without prior notice to the respondent. However, this legal remedy is granted upon the applicant convincing the court that:

Applicant has a prima facie case or cause of action which they contemplate to pursue against the infringer.
The respondent has in their possession information or materials which the applicant views vital in the prosecution of the contemplated infringement suit, and
There is real and well-founded apprehension or fear the information or materials may be destroyed or disposed of before the stage of discovery.

In determining infringement and remedy from an Anton Piller order, the court would employ principles of equity such as the cogency of the applicant’s prima facie evidence and comparative potential harm likely to be suffered by the respondent in the event the order is refused.

It would also consider terms of the order in the event of the remedy being granted as weighed against the damage the applicant would likely suffer if the order is refused.

That the terms of the order should not be more onerous than is necessary to secure the applicant’s interests is neither here nor there. This remedy is somewhat prone to abuse by the applicant. This is particularly so given that our small to medium enterprises seriously lack IP knowledge. Meanwhile, the dominant applicant would be far more IP-conscious. They also have the advantage of access to the best legal brains to prosecute their case.

Clearly, this is a somewhat tricky type of remedy. This is because it is not based on our inherited Roman-Dutch principles. Moreover, what constitutes the prima facice case of action is left to the whims of the court.

Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: Mobile +263 775 053 007 or e-mail henripasi@gmail.com

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