RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q4/GBR/1
7 August 1998
(98-3111)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON ENFORCEMENT
UNITED KINGDOM1
The present document reproduces the introductory statement made by the delegation of the
United Kingdom, the questions put to it and the responses given in the review of legislation on
enforcement at the Council's meeting of 17-21 November 1997.2
I. INTRODUCTORY STATEMENT
Intellectual property rights in the United Kingdom are private rights and consequently the
onus on enforcing those rights lies with the right holder.  The role of the State is to provide a
comprehensive and well-developed legal system to allow right holders to enforce their rights.  Such a
legal system is provided in the United Kingdom through a combination of the common law system
and statutes.  Under this system, both civil and criminal action is possible for infringement of
intellectual property rights.
Civil judicial procedures and remedies
In the United Kingdom, civil jurisdiction is divided between the "High Court" and a system of
"county courts" for the adjudication of matters of lesser importance.  Within the High Court structure
there is a specialist "Patents Court" which has exclusive jurisdiction to hear disputes concerning
patents and registered designs.  The judges of this Patents Court are usually persons who have hadextensive experience as advocates in intellectual property disputes.  These judges are also general
judges of the High Court and, as such, are often assigned cases relating to enforcement of trademarks
(whether registered or unregistered) and of copyrights and related rights.
Within the county court system there is also a "Patents County Court" before which disputes
concerning patents, registered and unre gistered design rights may be brought.
The full range of civil remedies is available for intellectual property infringement.  These
include injunctions, damages, orders for delivery up or destruction, and an account of profit.
Criminal procedures
The offences of trademark and copyright infringement may be tried in the United Kingdom
by a jury trial before the Crown Court or by summary  jurisdiction in a Magistrates' Court.  Penalties
for such offences include unlimited fines and imprisonment up to a maximum term of ten years.
                                                     
1 As regards laws and regulations relevant to the area under review and notified by the United Kingdom
under Article 63.2 of the Agreement, reference is made to documents IP/N/1/GBR/1 and IP/N/6/GBR/1.
2 The minutes of this meeting have been circulated as document IP/C/M/16.IP/Q4/GBR/1
Page 2
Border enforcement
The requirements of section 4 of Part III of the TRIPS Agreement are met in the
United Kingdom predominantly through Council Regulation (EC) No. 3295/94 which has direct effect
within the United Kingdom.
Further details on the enforcement of intellectual property rights in the United Kingdom can
be found in the United Kingdom's responses to the Checklist of Issues on Enforcement,3 and in the
responses given in this review, a selection of which is now presented.
II. REPLIES TO QUESTIONS POSED BY HONG KONG, CHINA
Civil and administrative procedures and remedies
1. Is it correct to say that intellectual property infringement cases often end in the
interlocutory stage?  If yes, what seem to be the reasons?  Is this desirable in the interest of
justice?
Cases which end in the interlocutory stage are usually those where the defendant appreciates
that it is unlikely upon full trial that the eventual decision would be otherwise.  That is in the interests
of justice because the time of the courts, and the efforts and legal costs of the parties should not be
expended on performing what may be seen as a largely ritualistic exercise.  Moreover, in the
United Kingdom, it is unusual (although possible) for the courts to order that the losing party in an
interlocutory proceedings should have its costs assessed and paid "forthwith".  The usual order is thatcosts of the preliminary proceedings should be "costs in the cause". that is to be assessed and paid by
the eventual losing party only after full trial.  Th us, it may be helpful for a losing party at the
interlocutory stage not to pursue the matter further because, unless the court may eventually hold that
the decision at the interlocutory stage was wrong, he  may avoid paying any costs of the interlocutory
stage to the successful party.
Also, where a plaintiff obtains an interlocutory injunction, he is often not interested in
pursuing a claim for damages, since these might be quite small at this stage and the injunction will
satisfy his commercial objectives.  Such a plaintiff will not then have any incentive to proceed to a
main trial and it will then be for the defendant to decide whether he wishes to overturn the injunction
at full trial.  Often this will not be so because the effect of the injunction will cause the defendant to
change the alleged infringing product in a way that infringement is, at least now, avoided.  If the
plaintiff accepts that the altered product is non-infringing, then neither the defendant nor plaintiff has
any further incentive to proceed to full trial.  This is particularly the case with trademark
Infringement.  If a defendant is enjoined, by an interlocutory injunction, against use of a trademark
because it is the same as, or too similar to, the registered trademark of the plaintiff, the reality is that
in order to stay on the market, the defendant will start to use a different trademark, If this isunobjectionable to the plaintiff neither party has any incentive to pursue a full trial assuming that the
interlocutory injunction was imposed at an early stage in the defendant's marketing so that any award
of damages would be small.
It should be added that the United Kingdom courts do not insist on holding a trial on the
merits.  The courts only take action when requested by any one of the parties to a litigation to do so.
As a result, a high proportion of cases brought before the United Kingdom courts become dormant
without formal resolution, simply because each party sees that to proceed to finality of the action
would not be in its overall economic interest.  Sometimes, there may be a settlement of the litigation
simply record that  dismissal in its records.
                                                     
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Anyway, for one reason or another, only about 5% of the actions which are commenced
before the High Court of England and Wales comes to full trial: pre-trial settlement, whether formal
or informal is therefore the norm However, it must be stressed that the choice of having a full trial is
one entirely for the litigants and, if any one litigant so insists, that trial will take place.
2. In civil proceedings are there any proof facilitation provisions which could create legal
presumptions of intellectual property subsistence and ownership and thus could excuse the right
owner from appearing in court and to testify these issues?  If not, why not?
To commence any litigation in the United Kingdom, the plaintiff must serve upon the
defendant a "Statement of Case".  In civil intellectual property litigation, this Statement will assert
that the plaintiff is the owner of the intellectual property right in issue (or is an exclusive licensee
entitled as such to bring proceedings under that right) and that such right subsists (or did subsist at the
time of the acts of which complaint is made, such being within the period allowed for action to be
brought under the Limitation Act 1980 (Chapter 58)).  If the defendant wishes to contest the litigation
a Defence statement must be served upon the plaintiff within the time permitted by the Rules of
Court.  If a defendant fails to do this, or failed previously to file with the court the required"acknowledge of service" of the proceedings upon him, the plaintiff may apply to the court for
summary judgment to be granted.  The court will then make an order in the terms requested in the writ
or other pleading by which the proceedings were initiated.
Where a Defence statement is served upon the plaintiff, the defendant is required to set out in
this those assertions made in the Statement of Case which are contested or denied.  Unless any
assertion is positively contested, or is denied, that assertion is accepted and therefore no longer needs
to be proved.  Subsequently during the proceedings, each party is likely to serve upon the other
"Requests to make Admissions".  Likewise, if these result in any admission by the party requested,
that admission will remain binding upon that party for the remainder of the litigation unless the courtshould allow its withdrawal, Once a fact fails to be challenged in the defendant's Defence, or is
subsequently specifically admitted, that fact is no longer the subject of dispute and no proof of that
fact is then required to be submitted to the court.  If such a fact is a matter of ownership or
subsistence, then such is established for the future conduct of this particular litigation.
In addition, the submission of a certified copy of the entry in the relevant register of an
intellectual property right is prima facie proof as to ownership and subsistence of that registered
intellectual property right, although a defendant is not estopped from contending that the register does
not record the true position, presumably coupling that plea with a request that the entry in the register
be rectified.  Thus, proof of subsistence of a registered intellectual property right is normally a purely
formal one of submitting a certified copy of the relevant register entry, but even that would not be
necessary if the defendant has already accepted (explicitly, or implicitly by failing to deny them) theallegations of ownership and subsistence.
As regards certain unregistered rights, the relevant statute sets out some legal presumptions
which have the same effect as the prima facie effect of a copy of a register entry in the case of a
registered intellectual property light, for which see above.  For example statutory presumptions asregards ownership and subsistence are set out in the Copyright, Designs and Patents Act 1998,
(Chapter 48, as amended): in sections 104-106 for copyrights; in sections 93A and 93B for film and
sound recording rental rights; and in section 191C for performers' rights.
In other cases, which are those in which ownership and subsistence of the right are not so
apparently evident, sufficient proof thereof must be submitted to the court as to satisfy the court on
these matters on the balance of probability.  The amount of proof that will be required will depend
upon the complexity of the situation and, especially, on the degree to which these matters have beenIP/Q4/GBR/1
Page 4
made the subject of challenge in the Defence.  If th e court sees that such a challenge lacks credibility,
or is otherwise fanciful in nature, it can dismiss that challenge, perhaps in a preliminary hearing or as
part of an application made by a plaintiff for summary judgment on the basis that no defence to the
action can be seen.  Such an example is the recent case of  Microsoft Corporation v. Electro-Wide Ltd.
and Atlantic Business Systems Ltd.  (unreported, but transcript available in the British Library under
reference SRIS C/30/97) where the defendant asserted that it should not be presumed that the plaintiffnecessarily owned the copyright in the computer software which it supplied and the court held this
plea to have no factual basis.
Accordingly, questions of ownership and subsis tence of an intellectual property right are
unlikely to be matters upon which a court will need to adjudicate (at least at any length), except in
rare, and then justifiable, circumstances.
Criminal procedures
3. Does any intellectual property enforcemen t agency have the legal power to seize and
forfeit suspected infringing articles, whether or not a charge has been laid?  If not, why not?
Enforcement of intellectual property rights is essentially a matter m the hands of the owner
(or in some instances an exclusive license, including a collecting society) of that right.  The State as
such is not concerned with intellectual property enforcement since intellectual property rights are
privately owned.  The function of the State is to assist  owners of intellectual property rights to enforce
these when they so desire.  Nevertheless, there are some provisions for unilateral action by an agencyof the State, as indicated below.
As regards unauthorised use of a trademark every local weights and measures authority
(which will normally be a department of a local government council) has a statutory duty to enforce
within their area the criminal provisions of the Trade Marks Act 1994 (Chapter 26, section 92).  Theseprovisions (which are set out in detail in this section 92) can be summarised as relating to use of a
registered trademark, in a manner which can be regarded as a counterfeit activity or to acting in a
specified manner, or to making or possessing an article, in a situation which would facilitate such
counterfeit use by another.
Also, as regards copyright or trademark infringing acts, the Customs & Excise authority is
charged to detain, temporarily, goods in its possession for entry into free circulation, export or re-
export where "it appears evident to the customs office that goods are counterfeit or pirated' and then to
notify the holder of the right, where known of a possible infringement thereof.  The goods are then
detained for three working days to allow time for the right holder to file an application for detention
of these goods pending inspection and the bringing of proceedings before a court, as envisaged by
Section 4 of Part III of the TRIPS Agreement.
The custom authority is then required to act (in a similar way in response to a monitoring
application previously lodged by a rights owner, according to the procedure envisaged by Section 4),
and detain the goods provided that the customs office is satisfied that the goods in issue "correspond
to the description of the counterfeit or pirated goods" supplied by the applicant when making theapplication for detention.  Again, the goods will be released if, at the end of the period specified in
Article 55, the right owner has not made an application to the court.
4. Is there a specialized intellectual property enforcement agency?  If not, what is the
rationale?
Please see the response to the previous question.  In general, the State does not own
intellectual property rights and it is considered that the enforcement of rights should primarily be inIP/Q4/GBR/1
Page 5
the hands of their owners.  Therefore there is no specialised criminal intellectual property agency.
However, the fraud squads of the police authorities, and the local weights and measures authorities,
will (upon request by or on behalf of a rights owner) make investigations which may lead to
prosecutions brought by the State at the behest of such an authority when it is satisfied that there has
been criminal behaviour of a magnitude that it is In the public interest to bring criminal charges before
a criminal court in respect thereof.
Also, the State as such provides facilities to assist owners of intellectual property rights in
enforcing their rights, mainly by making available suitable courts to reach decisions and issue
appropriate orders for enforcement of rights, and with due expedition, although only after an alleged
infringer has been given proper time and opportunity to contest the allegations made against it,
including being heard in oral proceedings if these are requested.  It is not to be presumed that any
person charged with infringement of an intellectual property right is necessarily guilty of theallegation made against him.  The principles of natural justice are applied in all proceedings brought
before a court, whether of a civil or criminal nature.
5. In criminal proceedings, are there any proof facilitation provisions which could create
legal presumptions of intellectual property subsistence and ownership and thus could excuse theright owner from appearing in court and to testify these issues?  If not, why not?
Please see the response to question 2 above.  The provisions there explained generally apply
equally to criminal, as well as to civil, proceedings, save that the submission of the above mentioned
prima facie  proofs will normally be required because a defendant in criminal proceedings rarely
makes any admission, putting the prosecutor to proof of all relevant facts.  Moreover, in criminal
proceedings, such facts have to be proved "beyond reasonable doubt", but the above mentioned prima
facie  proofs, and statutory presumptions, will often be sufficient to establish matters of ownership and
subsistence, particularly in the case of trademark registrations.
III. RESPONSES TO QUESTIONS POSED BY JAPAN
1. Please indicate the "competent authoritie s" stipulated in Article 51 of the TRIPS
Agreement.
The competent authority is the HM Customs & Excise arm of the United Kingdom government and
the powers required by Article 51 are exercised by its officials (customs officers) in the manner
explained in response to question 16 of the Checklist of Issues on Enforcement.
4
2. Please explain whether "proceedings leading to a decision on the merits of the case"
stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
In the first place, goods are detained for inspection by the customs authority who act in an
enforcement capacity.  Once the customs authority ar e satisfied that the goods are liable to forfeiture
they will seize them.  The goods will normally be destroyed unless the seizure is contested within a
one month appeal period.  If the seizure is contested then the customs authority are required to
instigate proceedings under Schedule 3 of the Customs and Excise Management Act 1979 for
condemnation of the goods.  These proceedings are brought before a court which is judicial body.  Ifthat court makes an order for forfeiture, that or der is communicated to the customs authority which
then destroys the goods.  Thus, the substantive decision is taken by a court as a judicial body.
                                                     
4 Document IP/N/6/GBR/1.IP/Q4/GBR/1
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3. Are there any ways other than  the application stipulated in Articles 51 and 52 of the
TRIPS Agreement (hereafter referred to as "t he Application") which enable a right holder to
request the competent authorities to suspend the release of the goods which infringe intellectual
property rights or which are suspected to  infringe intellectual property rights?
The position is as explained in the United Kingdom Response to question 15 of the Checklist of Issues
on Enforcement.5  Besides the provisions of the Regulation, there are some residual provisions in
enactments which pre-date the commencement of this Regulation, but these have little or no current
significance, as explained in this response to the Checklist.
4. Please explain what term your country regards  as "a reasonable period within which the
competent authorities shall inform the applic ant whether or not they have accepted the
Application" stipulated in Article 52 of the TRIPS Agreement.
Council Regulation (EC) No. 3295/94 does not provide for any precise period.  The only
provision which deals with this question is Article 3(5) which stipulates that the competent authority,
which in the United Kingdom are HM Customs and Excise, shall forthwith (emphasis added) notify
the applicant in writing of its decision.
5. Please explain the term during which the Application is effective.
As explained in the United Kingdom's response to question 16 of the Checklist of Issues on
Enforcement5 an applicant must pay a fee for the monitoring service provided by the customs
authority.  The initial fee is for a period one month but further fees may be paid for an extension ofthis period.  Such extension fees are payable by month and there is no limit to the number of such
extension periods which can be requested.
6. Please explain whether a right holder is oblig ed to pay any fee to lodge the Application.
No fee is charged for lodging an application under Council Regulation (EC) No. 3295/94,
however a fee will become payable if the application is accepted.  The level of the fee is as specifiedin The Counterfeit and Pirated Goods (Cus toms) Regulations 1995 (SI 1995 No. 1430) and is
currently £185 + Tax for the first months of the period and £165 - Tax for each subsequent month.
7. Please indicate provisions of laws and ordinances which prescribe the "proceedings
leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPS Agreement.
And please summarize their contents.
The proceedings which may be commenced in respect of goods detained by customs
authorities as suspected counterfeit or pirated goods may be either civil or criminal in nature.
Civil proceedings are commenced before the c ourt (which may, be the High Court or a
County Court or in Scotland the Court of Sessi on or a Sheriff Court) seeking:  damages (to
compensate the rights owner as regards the losses he has suffered by the acts carried out in
infringement of copyright or trademark registration), or an "account of profits" (that is to compel the
infringer to hand over the profits which the infringer made from the infringing, acts);  together with an
injunction against further acts of infringement (breach of which would be a contempt of court which
can be punished by unlimited fines, confiscation of assets and imprisonment of those responsible for
such breach);  delivery up of infringing goods for destruction or use by a person specified the court
(such goods including articles "specifically designed or adapted for making copies of a particular
copyright work", provided that the person in posse ssion thereof" knew or had reason to believe" that
                                                     
5 Document IP/N/6/GBR/1.IP/Q4/GBR/1
Page 7
the article has been or was to be used to make infringing copies of the copyright work);  and
reimbursement of the right holder's legal costs.
Criminal proceedings will be commenced before a Magistrates' Court (in Scotland, a Sheriff
Court) in the first instance, but may be referred to  the higher Crown Court (in Scotland the Court of
Session) which has power to impose higher penalties.
For counterfeit use of trademarks, the relevant provisions (as summarized above) are set out
in the Trade Marks Act 1994 (Chapter 26, sections 14-20 for civil proceedings and section 92 for
criminal proceedings).  For pirated goods in infringement of copyright or for breach of performers'
right, the relevant provisions are set out in the Copyright, Designs and Patents Act 1988 (Chapter 48,
sections 96-102 and 198-202 for civil proceedings, and sections 107-111 for criminal proceedings).
Proceedings before any of these courts will follow those for other civil or criminal
proceedings as the case may be and the complainant will only succeed if it is able to satisfy the court,
on the balance of probability based on the evidence presented to that court, that an infringing act
under one of these statutes has been committed.
8. Please explain the specific procedure, if any, to be applied to goods which are not
evident whether or not they infr inge intellectual property rights , in Article 55 of the TRIPS
Agreement.
Article 55 of the TRIPS Agreement applies only to counterfeit goods in infringement of
trademark or pirated goods in infringement of copyright or a related right thereto.  Where goods
suspected to be of either of these categories ha ve been detained by the customs authority, the
applicant for that detention has to be given the opportunity to inspect those goods.  To succeed in
obtaining relief in respect of the detained goods, the applicant bears the onus of satisfying the court,
on the balance of probability, that the goods are of an infringing character.  The extent of the evidencerequired so to satisfy the court will depend upon the strength of any positive defence of
non-infringement which the defendant chooses to put before the court, perhaps with argumentation
also supported by factual evidence, for example that the goods in question originated from the right
owner or were otherwise produced with his authorisation, or where the deductions made from an
inspection of the detained goods are asserted to be erroneous.
9. Please explain the responsibility that th e competent authorities and other related
authorities take to the right holders when they fail to suspend the release into free circulation of
goods which infringe intellectual property rights  with regard to the suspension based on the
Application or the Ex Officio Action stipul ated in Article 58 of the TRIPS Agreement.
Under Article 6 of the Regulation, the Authority is only empowered to detain goods if it is
"satisfied, after consultation with the applicant where necessary", that the goods in question
correspond to the description of counterfeit or pirated goods set out in the Application.  As regards
ex officio action as contemplated by Article 58 of the TRIPS Agreement, goods are only detained
where "it appears evident to the customs office that goods are counterfeit or pirated".  Consequently,
no action for a breach of its statutory duty will lie against the Authority for reaching a wrongconclusion on either of these matters unless the applicant could show to the satisfaction of the court
that the Authority had no basis for not being so "satisfied" as to the correspondence with the
description provided, or that it should have been "evident" that the goods in issue were counterfeit or
pirated.  Each of the required positions by the Authority is a subjective one and it is unlikely that,
except in a most blatant case, a court could be satisfied that the Authority had not acted according toits honest belief at the time.IP/Q4/GBR/1
Page 8
10. Please explain the responsibility that th e competent authorities and other related
authorities take to the right holders when they examine goods which infringe intellectual
property rights and nevertheless release them in to free circulation with regard to the suspension
based on the Application based on the Applicat ion or the Ex Officio Action stipulated in
Article 58 of the TRIPS Agreement.
Please see the response to the previous question which is also applicable to the situation posed
by this question.
11. Please explain the responsibility that th e competent authorities and other related
authorities take to the importer s when they suspend the release into free circulation of goods
which do not infringe intellectual property rights with regard to the suspension based on the
Application or the Ex Officio Action stipul ated in Article 58 of the TRIPS Agreement.
Please see the responses to questions 9 and 10 above.  As there indicated, it is unlikely that an
importer could show to the satisfaction of the co urt that the customs office should not have been
"satisfied" that the goods corresponded to the description of the Applicant, or that it should not have
been regarded as "evidence" that the goods were counterfeit or pirated.  Anyway, the customs officewill normally adopt a cautious approach to the taking of action under the regulation and this is an
additional safeguard to an importer against inappropriate action being taken by a customs office under
the Regulation, and hence under the TRIPS Agreement.
12. Is the right holder informed of identities  of the importers and consignors when the
competent authorities "suspend" the goods which infringe on intellectual property rights or
which are suspected to infringe intellectual proper ty rights, as well as the case where the right
holder is informed of identities of the importer s and consignors stipulated in Article 57 of the
TRIPS Agreement.
As required by the Regulation (Article 6), when the free circulation of goods is suspended by
the customs authority, the customs authority is required immediately to inform both the importer and
the Applicant of this suspension and, if the right holder has so requested, he is to be informed of the
name and address of the importer and, if known, also the name and address of the consignee.  This
information will be provided in advance of any inspection of the detained goods.  Moreover, uponrequest by the right holder, he is entitled to be informed of the names and addresses of the consignor,
the importer or exporter and of the manufacturer of the goods, although only after the customs
authorities are satisfied that the goods are counterfeit or pirated (Article 8(3) of the Regulation) and
have seized them.
13. Please explain the measures to protect conf idential information in the course of the
inspection stipulated in Article 57 of the TR IPS Agreement.  And please indicate provisions of
laws and ordinances which prescribe such measures.
Article 6 of the Regulation requires that the names and addresses of importer and consignee
be communicated to the Applicant only "in accordance with national provisions on the protection or
personal data, commercial and industrial secrecy and professional and administrative confidentiality".
There are numerous provisions under United Kingdom laws which protect confidential
information in various circumstances.  Overall, confidential information is protected under the
"common law" (that is the unwritten law of custom and practice established over the centuries).  This
protection is founded on the general principle of equity, that is that persons should behave withprobity and rectitude.  Thus, as the information is communicated under a legal provision which
requires that information to be protected. the Applicant receiving this information is under an
obligation to the custom authority not to use that information other than for the purpose for which itIP/Q4/GBR/1
Page 9
was supplied, that is for the purpose of bringing enforcement procedures in relation to the detained
goods, if the right holder deems this to be appropriate.  If the information communicated to the right
holder by the customs authority were to be used for any other purpose, the custom authority could
seek an award of damages and an injunction against any further misuse of information supplied by the
authority, at any time in the future.  Then, any, subsequent breach of the confidentiality obligation,
would become punishable as a contempt of court,  for which the court may impose an unlimited fine,
sequester assets and sentence those who caused the breach of confidence to imprisonment.
When proceedings are brought before a court for enforcement of an intellectual property right
the court is entitled to impose any restrictions that it may think, fit as regards disclosure of
information presented to the court. even though the court proceedings are, or were, open to the public.
In this way, journalists can be restrained from disclosing information if this is thought appropriate in
the interests of justice.  Nevertheless, the general principle as regards court proceedings is that, not
only should justice be done by the court, it should be seen by the public to have been done.  However,
be prohibited by a court, particularly where it is seen that to do so may prejudice other legal
proceedings which have been brought or which are contemplated.
14. Please explain the procedures of detentions and seizures to be ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
Following detention by the customs authority, th e right holder is given ten working days (with
possible extension of a further ten such days) within which to inspect the goods, if desired, and to
show that these detained goods are in fact count erfeit or pirated.  Once the customs authority are
satisfied that the goods are liable to forfeiture they will seize them.  The goods will normally be
destroyed unless the seizure is contested within a I month appeal period.  If the seizure is contested
then the customs authority are required to instigate proceedings before a court under Schedule 3 of the
Customs and Excise Management Act 1979 for condemnation of the goods.  If that court makes an
order for forfeiture, that order is communicated to the customs authority which then destroys thegoods.  Please also see the responses to questions 15-18 in the United Kingdom's responses to the
Checklist of Issues on Enforcement.
6
15. Please explain the procedure to appeal a gainst any decisions ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
Any decision to reject an application for the suspension by the custom authority of the release
into free circulation of goods suspected of being counterfeit trademark or pirated copyright goods is
appealable to the customs authority.  An importer can also appeal against a customs authority decision
to seize goods.  Please see also answer to question no. 2 above.
16. Please explain the basis for calculating the s ecurity or equivalent assurance stipulated in
Article 53 of the TRIPS Agreement that the competent authorities may require an applicant
when they suspend the relea se from free circulation.
The amount of security required is assessed by the customs authority individually, in each
instance and will depend upon the nature of the goods and their likely value.  There is no general rule.but the security has to be sufficient to cover anticipated storage charges, legal costs and possible
compensation in the event that the goods are held to be non-infringing and any out of court settlement
claims.  An Applicant can expedite matters by giving voluntarily, a guarantee. preferably from an
independent bank. to reimburse the customs authority on these matters up to a specified amount, this
being a generous estimate for the likely maximum lia bility to the customs authority in respect of any
claims of these types.
                                                     
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17. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS
Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
The customs authority may pass on charges for storage of goods detained under the
Regulation and for destruction by it.  Normally, any storage costs are borne by the importer whengoods are detained for Customs enquiries.  Once goods are seized they become the property of the
Crown and subsequent storage and destruction cost s are borne by Customs.  Customs may also seek
legal costs from the right holder for any loss suffered if the goods are confirmed either by the
applicant or by the courts not to be infringing the costs involved in bringing condemnation
proceedings before a court, any awards made against the customs authority and any, out-of-court
settlement claims.
18. Please explain what kind of cases are regar ded as "the exceptional circumstances" in
which the competent authorities may allow re-exportation of counterfeit trademark goods
stipulated in Article 59 of the TRIPS Agreement.
Under Article 8 of the Regulations, the general rule is that goods found to be counterfeit or
pirated are to be destroyed.  However, the following are not regarded as having that effect: "re-
exporting the counterfeit or pirated goods in the unaltered state"; "placing the goods under a differentcustoms procedure"; or.  "other than in exceptional cases, simply removing the trademarks which have
been affixed to the counterfeit goods without authorisation".  Thus, it is only in the case of counterfeit
(and not pirated) goods that there can be an "exceptional" case, and re-export would only bepermitted, if at all, if the goods were considered an exceptional case and then only after removal of
the offending trademarks.
No case is known which has yet been regarded as "exceptional" in this way and it is
impossible to speculate with any degree of reality in what circumstances a case might be so regarded.
IV. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
General obligations
1. Please describe briefly the procedure that mu st be followed by a foreign party to initiate
an enforcement procedure in each of the courts and administrative bodies identified in response
to question 1 of the Checklist of Issues on Enforcement and cite the legal authorities establishing
these procedures.
Foreign parties follow precisely the same procedure as domestic parties in initiating
enforcement procedures before all courts and administrative bodies.  A complaint (in the form of a
writ, paint, summons or application, according to the court or administrative body chosen) will befiled therewith by a permitted legal representative of the party who must have an address for service
within the jurisdiction of that court or body.  The same fee will be required as for a domestic party.
These matters are set out in the Rules of Court, being the Rules of the Supreme Court (in the
case of actions brought before the High Court for England and Wales. or before the High Court ofNorthern Ireland), the County Court Rules (in the case of actions brought before the Patents County
Court), and the Act of Sederunt (in the case of actions commenced before the Court of Session in
Scotland).
2. Please identify any requirement that a foreign party must meet to initiate a proceeding
in the courts and administrative bodies that is  not required of a national of resident of the
United Kingdom and cite the legal authorities providing for these differences.IP/Q4/GBR/1
Page 11
A foreign party may be required - on the application of a defending party and only after the
procedure has already been initiated - to provide some security in respect of a possible future order to
pay the defendant's costs in the event of the enforcement procedure not succeeding.  This arises
because, in the United Kingdom, an unsuccessful party, is normally required to pay costs to the
successful party and security, is required because of the perceived difficulty in enforcing an order topay costs against a party resident outside the jurisd iction of the court making the order.  In England
and Wales, the relevant legal authority is Order 23 of the Rules of the Supreme Court (with
corresponding provisions for actions in other courts or tribunals).
Nevertheless, no such order is normally made:
(a) where a domestic complainant is joined to the action with the foreign party (see Corfu
Navigation Co v. Mobil Shipping Co ., [1991] 2 Lloyd's Reports 52); and
(b) where the foreign complainant is resident within the European Union because of the
existence of the Brussels Convention for the Reciprocal Enforcement of Judgments
(following the decision of the European Court of Justice in Hubbard v. Hamburger
(Case C-20/92, [1993] 1 ECR 3777).
It should be added that a domestic party may also be required to provide security against an
order for costs if the defendant can show that such party is unlikely to have sufficient financial
resources to meet such an eventual costs order, see Companies Act 1985 (Chapter 6, section 726(1)).
3. Please explain any provision in the enfo rcement system in th e United Kingdom that
ensures expeditious remedies.  In addition, please explain what provisions are available to
prevent deliberate delays by a party to a proceed ings and indicate the circumstances in which
such provisions will be applied.
In cases where a case for urgent relief can be made out, the court will hear the proceedings
without any delay, if necessary w ithin a matter of hours, even out of the normal working hours of the
court.  An interlocutory injunction may, even be granted on an ex parte basis, although either only, for
a short time pending a full inter partes hearing or (in Scotland) with the defendant having power to
seek its discharge, if necessary as a matter of urgency, or (in Scotland) that the plaintiff has a strong
prima facie  case.  However, interlocutory relief will normally only be granted if the court is satisfied
that the imposition of an injunction pending full trial on the merits of the case will cause less injustice
to a defendant than to a plaintiff.
The Rules of Court set out times by which various pre-trial procedures should be concluded
but the parties can usually agree extensions of these between themselves.  The Court only becomes
involved when requested by a party to set firm  time periods and a date for the eventual trial.
Nevertheless, where a party desires expedition, the Court normally assist. subject to the competingpressures of other cases before it and its own assessment of the competing priorities.  However,
having said this, the paramount objective of the courts is to ensure that proper justice can be done and
thus, where a defendant can show that it needs more time to present its defence, this will be taken into
account in fixing the trial timetable.  In short: rushed justice is considered to be no justice.  Where a
speedy trial is requested, it will normally be possible for a trial at first instance to be concluded withinnine to twelve months of the initiation of the proceedings, provided that the plaintiff itself acts with
diligence.
Where a court forms the view that a party is deliberately, and unjustifiably, attempting to
delay the proceedings, it will make an "unless order".  Under such an order, unless the stated action istaken within the period set by the court, the action (or the defence as the case may be), will beIP/Q4/GBR/1
Page 12
dismissed leading to automatic judgment for the other party.  Disobedience of an order of the court
also amounts to a "contempt of court" in respect of which a court can impose any penalty which it
considers appropriate, including sequestration of assets and committal to prison of a person held to be
in such contempt.  However, such draconian remedies are rarely applied because their very existence
leads to orders of the court being obeyed as a matter of course.
4. Article 41.2 addresses, among other things, the cost of judicial and administrative
enforcement proceedings.  Please describe any fees charged by judicial or administrative
officials for filing legal actions involving intell ectual property or for pursuing such actions once
initiated, cite the legal authorities for such f ees and provide copies of the documents used to
inform the public of such fees.
The fee required to initiate an action before the High Court of England and Wales or the
Patents County Court is £500, assuming that the sum claimed by way of damages is not specified or
exceeds £100,000.  A further fee of £50 is required whenever an application is made to the court for
pre-trial directions or for an interlocutory order, and there is a fee of £150 when the action is "set
down for trial", that is when a trial date is fixed.  Otherwise, there are no further court fees.  These
fees (for the High Court) are set out in the Supreme Court Fees Order 1980 (Statutory Instrument
1980 No. 821, as amended from time to time).
It is to be noted that these fees are essentially of a nominal character when compared to the
costs normally arising from legal representation in the proceedings, although it is possible for a
personal (as distinct from a corporate) litigant to appear without legal representation.  Thus, theadministrative costs of the courts are largely borne out of governmental funds.
5. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case
preferably be in writing, the better to determin e the reasoning on which the decision is based.
Please state, with regard to each type of court and administrative body whether judges oradministrative officials must render their decisi ons in writing and cite the legal authorities
requiring such written opinions.
It has been the firm custom in the United Kingdom for at least 200 years (as distinct from a
formal legal requirement) for decisions of the courts (as distinct from jury decisions, which areinapplicable to intellectual property enforcement procedures in the United Kingdom) to be
accompanied by full reasoning.  Where a judge may lapse from the custom in a particular case, he can
be expected to be severely criticised by an appellate court.  Nowadays, it is customary for a written
judgement to be handed down in open court after a short period of reflection by the court.  Members
of the public can obtain a copy thereof upon payment of the cost of transcription.  Such a transcript
will be required if an appeal is to be taken from that decision.
Civil and administrative proceedings and remedies
6. Article 42 requires that defendants be notified of judicial and administrative intellectual
property enforcement procedures brought again st them.  Please describe the procedures
followed by courts for notifying defending parties regarding proceedings that have beeninitiated against them, indicate the information provided regarding the proceeding and cite the
legal authorities establishing those procedures.
In all but exceptional applications for urgent ex parte  short-term relief (which only occur in
rare instances, as explained in the response to question 3 above), judicial proceedings are commencedby obtaining a writ from the Court and serving this personally or by mail upon the defendant party at
its address, in the case of a company registered in the United Kingdom this being the address of. its
registered office recorded in the register of companies.  Alternatively, a defendant can agree to acceptIP/Q4/GBR/1
Page 13
such service upon its appointed lawyer or at some other specified address.  The defendant is then
required (within a defined period) to lodge a fo rm with the court acknowledging service of the
proceedings.  The initiating party must also serve upon the defendant a particularised statement of
case and this service triggers the onset of the period within which the defendant must serve upon the
initiating party a statement of its defence to the proceeding.  If no such defence is served. the initiating
party may seek summary judgment from the court. but this will be denied unless that party satisfiesthe court that a copy. of the writ and its statement of case have been so served upon each of the named
defendants and/or the court has failed to receive from the defendant an acknowledgement that such
service has been effected.
For the High Court of England and Wales, the relevant provisions are set out in Orders 10 to
13 of the Rules of the Supreme Court, coupled with the provisions for service of proceedings against a
registered company set out in the Companies Act 1985 (Chapter 6, section 725).
Thus, it is the notification of the proceedings to the defendants which, in effect, commences
those proceedings and there is no effective initiation of the proceedings without such notification.
The court itself (as distinct from its administrative offices) only becomes involved when a party, asks
it to make some order which (except in exceptional cases) it will only do upon proof that the papers inthe proceedings have been served upon the defendant according to the Rules of Court or the statutory
provision identified above.
7. Article 43.2 provides that, in the event of a party refusing to provide information
ordered by the judicial or administrative offici als, those officials may be authorised to make
preliminary and final determinations adverse to that party.  IP/N/6/GBR/1 indicates that failure
to provide documents is treated as contempt of court.  Please state whether authorities may
make determinations adverse to a party that refused to provide ordered information and under
what circumstances such a sanction might be imposed.
No such determinations would be made by a court without the court first fully satisfying itself
that there has been a contumacious refusal by a party to obey a court order properly communicated to
it and after opportunity for that party to explain its conduct to the court.  Alternatively, a court could
order summary judgment against a party who fails to comply with an order of the court, but again the
court would first need to be satisfied that the fail ure was unjustifiable and after providing that party,
with an opportunity to explain that failure.  The imposition of any such order may be the subject of an
appeal to a higher court.  The existence of these powers acts as a deterrent'-and it can normally be
expected that a party will either comply with the te rms of a court order or first seek to appeal those
terms to a higher court.  Thus, the applicati on of such powers is, in practice. a rare event.
8. Article 44.2 provides an exception to the requirement in paragraph 1 for government
use or use by third parties authorised by the government, limiting the remedy for infringement
to payment of adequate remuneration as provided  in Article 31(h).  Please describe any such
limitation on remedies in the laws of the United Kingdom and cite the legal authorities
providing for those limitations.
In the case of patents, use of a patented invention for governmental purposes for the services
of the Crown is not regarded as an act of patent infringement, but any such use is the subject of
compensation paid by the government to the patentee.   The power for such "Crown use" is set out and
defined in the Patents Act 1977 (Chapter 37, secti ons 55-57A).  The exercise of such power requires
authorisation in writing by a government department.  Such authorisation can be given retroactively
(see Dory v. Sheffield Health Authority , [1991] FSR 221).  Such authorisation can only be granted in
respect of acts carried out "for the services of the Crown".  This term is defined as use by any
governmental department and includes use by any person authorised in writing by a government
department for: the supply of anything for foreign defence purposes:  the production or use of atomicIP/Q4/GBR/1
Page 14
energy or research into matters connected therewith as the Secretary of State thinks necessary or
expedient (section 56(2)).  Where this power is exercised, it extends also to any design right or
copyright associated with the relevant patent.  The compensation for authorised use of a patented
invention for the services of the Crown (as defined as indicated above) can, in the absence of
agreement, be the subject of assessment by the Patents Court (Patents Act,. section 58).  Similar
power exists in relation to the governmental use of a registered design (Registered Designs Act 1949,Chapter 88, section 12 and Schedule 1, as amended) and of design rights (Copyright, Designs and
Patents Act 1988, Chapter 48, section 240).  There is no power for governmental use of trademarks
without proprietorial authorisation therefore.  In practice, the powers in respect of designs are only
rarely exercised.
Under the Crown Proceedings Act 1947 (Chapter 44, section 21), the Crown (under which the
government of the United Kingdom functions) cannot  be the subject of an injunction since the
judiciary (also an emanation of the Crown) could not enjoin itself.  However, under the combined
effect of the Crown Proceedings Act (section 3, as  amended) and the Patents Act 1977 (section 129),
the Crown (except as regards the Monarch in a private capacity) is liable to an injunction where there
has been use of an invention outside the terms of these provisions or such use without authorisation.
In the event of a declaration of war or a st ate of emergency, the government would have
extended powers to make a wider use of patented inventions and also of other intellectual property
rights under the Patents Act 1977 (section 59) and/or the Patents, Designs, Copyrights and Trade
Marks (Emergency) Act 1939 (Chapter 107).  Howeve r, currently these powers are not in force and
merely exist in a latent form which could rapidly be brought into effect should an emergency situationpresent itself.
Provisional measures
9. Articles 50.3 and 50.8 require that judicial ad ministrative authorities be authorized to
require an applicant to provide evidence to es tablish with a sufficient degree of certainty that
the applicant is the right holder and that infr ingement has occurred or is imminent.  With
respect to each intellectual property right as defined in Article 1.2 of the TRIPS Agreement,
please describe the evidence required by right holders to establish ownership.
The court or administrative authority will assume that an applicant for relief is the true right
holder in the absence of any challenge thereto, or any denial thereof by a defendant.  Evidence is
therefore only required where the defendant challenges or denies that the right holder is entitled to
commence the proceedings brought against him.
In the case of a registered intellectual property right (that is a patent, registered trademark or
registered design), an entity (whether owner in equity or an exclusive licensee) is only, able tomaintain enforcement proceedings in respect of that  right of its proprietorial interest is a matter of
record in the appropriate register maintained at the United Kingdom Patent Office.  However, it may
previously commence proceedings and effect such registration before trial.  Sufficient prima facie
proof of ownership (or of entitlement to bring enforcement proceedings as an exclusive licensee) is
then established by submission to the court or administrative authority of a certificate from theComptroller of Patents certifying an entry in the regi ster of that right. but a defendant is entitled to
contest that proof and there may be a reduced liability to obtain damages where the registration of
proprietorial interest has been delayed (Patents Act 1977, section 68).
In the case of a copyrights and some of the rights related thereto, there are various statutory,
presumptions as to ownership of those rights (set  out in the Copyright, Designs and Patents Act 1988.
Chapter 48, as amended, see sections 104-106 for copyrights and sections 93A and 93B in respect of a
film or sound recording rental right).  These have the effect of a plaintiff asserting copyright to beIP/Q4/GBR/1
Page 15
presumed by the court to be the owner of the asserted right in the circumstances set out in one of these
provisions, subject to any challenge thereto by the defendant.  Thus, for example, where the plaintiff
in a copyright enforcement procedure can be identi fied with the name of the author set out in a
copyright work, this presumption prima facie  prevails.
Subsequent change of ownership would need to be proved by presentation to the court of the
instrument of transfer of rights and likewise in the case of enforcement proceedings brought by a
purported exclusive licensee of that right.  However, the court may be satisfied by less proof than this
and will not uphold a challenge to rights by a defendant which is seen to be wholly speculative in
character, see Microsoft Corporation v Electro-Wide Ltd. and Atlantic Business Systems Ltd .
(unreported, but transcript available in Brit ish Library under reference SRIS/30/97), where the
defendant asserted that it should not be presumed that the plaintiff necessarily owned the copyright in
the computer software which it supplied and the court held this plea to have no factual basis.
In the case of an unregistered design right, ownership attaches either to the designer (unless
the design was created under a commission or in the course of employment, where the commissioner
or employer. as the case may be, become the owner), provided that such person was one qualified to
obtain a design right, or otherwise by an equity, who first marketed the design in the United Kingdom(see the Copyright, Designs and Patents Act 1988, sections 214-221), but subject to any subsequent
transmission of that ownership.  For design rights  there is no statutory presumption of ownership and
evidence must be submitted to the court to establish ownership to the satisfaction of the court.  In
practice. the action is initiated with an assertion of ownership and the defendant will be asked to admit
this.  If the defendant makes no such admission. the plaintiff must provide sufficient evidence toestablish ownership, the degree of which will depend upon the defendant.  If the court is satisfied that
the failure to make an admission of ownership was unreasonable, the court will normally require the
defendant to pay the plaintiff's costs of providing that proof.  While oral evidence from the designer,
employer or commissioner may be sufficient, the existence of documents corroborating that oral
evidence will make it easier for the court to accept the asserted ownership.  If there has been asubsequent transmission of ownership of the design right. the instrument by which that transmission
was effected should be produced to the court, who may, be satisfied by production of a copy thereof.
Again, essentially, the matter is one for the plaintiff to establish to the satisfaction of the court on the
balance of probabilities and therefore the degree of proof required is relative to the extent. and
probity, of any challenge to lack of current ownership presented on behalf of a defendant.
The position is similar for enforcement of semi-conductor topography rights; performer's
rights:  rights in respect of asserted protection of geographical origins; and or rights in undisclosed
information, again there being no statutory presumption in respect of these rights.  These require to be
established to the satisfaction of the court on the balance of probability.
Special requirements related to border measures
10. Please explain whether procedures, permissible under Article 51 of the TRIPS
Agreement, are available to stop the export of goods suspected of infringing copyright and/or
trademarks.
As set out in the United Kingdom's responses to questions 15 and 16 of the Checklist of
Issues on Enforcement,7 the Customs and Excise Authorities have powers to detain goods which come
into their possession which they suspect to be counterfeit or pirated goods in that they are goods
which infringe a copyright (or related right) or a trademark registration.  These powers (according to
the governing legislation, which is Council Regulation (EC) No. 3295/94 ("the Regulation") extended
                                                     
7 Document IP/N/6/GBR/1.IP/Q4/GBR/1
Page 16
to goods "entered for free circulation, export or re-export", see Article 1(a) of the Regulation.  Thus,
such procedures are available.
11. Article 54 requires that the importer and th e applicant be notified promptly of the
suspension or release of goods.  Please specify the period within which the competent authority
is required to issue a notice that the release of goods has been suspended.
This question has been adequately answered in the United Kingdom's responses to
questions 15-17 of the Checklist of Issues on Enforcement.7 By way of repetition, under Article 4 of
the Regulation, where a customs authority detains goods because it is evident to it that these goods are
counterfeit or pirated, notice of possible infringement must be given to the right holder where known
and the authority may then suspend the release of the goods or detain them for a period of three
working days to enable the holder of the right to lodge an application for further action under
Article 3 of the Regulation, which provides for a ri ght holder to request detention of specified goods.
Where such goods are detained pursuant to either Article 3 or 4, the declarant for the goods, and of his
consignee (if known) must "immediately" and "forthwith" be notified and ten working days are then
required to elapse (with possible maximum extens ion for a further ten such days) within which the
right owner may take action before the courts for infringement of his right (Article 6 of the
Regulation).  Failing such action being taken. the goods are to be released subject to the satisfaction ofcustoms formalities, and goods can also be released upon the provision of a security sufficient to
protect the interests of the right holder (Article 7 of the Regulation).
12. Article 57 requires that the competent author ities be able to authorize the right holder
to inspect the detained goods in  order to substantiate the claims. Please explain how right
holders are provided an opportunity to inspect suspect goods that have been detained by the
customs authorities.
Under Article 6(1) of the Regulation, the customs office is required to afford the applicant and
the persons involved in the operations under the Regulation "the opportunity to inspect the goods
whose release has been suspended or which have b een detained". and "when examining the goods the
customs office may take samples in order to expedite the procedure".  There is no prohibition againstsuch samples being, passed to the right holder for analysis or for such analysis to be conducted at the
behest of the right owner. but this would be in the discretion of the custom authority or of the court
before which a complaint is made.
13. Article 60 permits Members to exclude from the provisions of border enforcement small
quantities of goods of a non-commercial nature carried by passengers or sent in small
consignments.  Please describe what constitutes a de minimis  import that is excluded from the
border measures under the law of the United Kingdom.
Article 10 of the Regulation specifies that it "shall not apply to goods of a non-commercial
nature contained in travellers' personal baggage within the limits laid down in respect of relief from
customs duty".
However, unless the imported goods fell within the above stated provision of Article 10, there
would be detention of goods where a request for su ch detention had been previously made to the
customs authority under Article 3 of that Regulation as indicated in response to question 11 above; the
provisions of the EC Regulation are mandatory in  such an instance, provided that the goods in
question can reasonably be located and identified.IP/Q4/GBR/1
Page 17
Criminal procedures
14. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least for
wilful trademark counterfeiting and copyright piracy.  Please explain how the penalties
provided under the law of the United Kingdom comply with that obligation.
In the case of counterfeit trademark goods. not only can the goods be forfeited (under the
Trade Marks Act 1995, Chapter 26, section 97 or (for Scotland section 98) but (under section 92(6) of
that Act) a Magistrates' Court (or in Scotland a Sheriff Court) may impose a fine not exceeding
£5,000 ("the statutory maximum") and/or a sentence of imprisonment for up to six months; or the case
can be sent for trial before a Crown court which has the power to impose an unlimited fine and/or a
sentence of imprisonment not exceeding ten years.
The same level of penalties are available for offences of copyright piracy (under the
Copyright, Designs and Patents Act 1988, Chap ter 48, section 107), with provision (under
Section 108 of that statute) for delivery up of infrin ging articles to the right owner or to such other
person as the court may direct.  Under section 108(2), the definition of "Infringing article" for this
purpose extends to articles "specifically designed or adapted for making copies of a particularcopyright work", provided that the person in possession thereof "knew or had reason to believe" that
the article has been or was to be used to make infringing copies of the copyright work.
These criminal penalties are considered to provide the necessary deterrent.
[Follow-up questions from the US]
1. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, inte grated circuit layout-design and trade secret
enforcement for each of the years 1996 and 1997, including the number of cases filed;
injunctions issued; infringing products seized; infringing equipment seized; cases resolved
(including settlement); and the amount of damages awarded.
Intellectual property rights in the United Kingdom are private rights and as such responsibility
for the enforcement of these rights lies essentially with the right holder.   The Government is not as amatter of course involved in civil disputes concerning intellectual property and consequently does not
collect comprehensive data  on such disputes.
Limited data is however recorded by the courts.  The data for 1996 is detailed below.  The
corresponding data for 1997 is not yet available.
As explained in the United Kingdom's responses to the Checklist of Issues on Enforcement,
8
most intellectual property disputes fall within the jurisdiction of the "Chancery Division" of the High
Court.  In 1996, the number of writs and originating summonses issued by the Chancery Division in
the field of intellectual property was as follows:
- Confidential information: 28- Passing off and trademarks: 288- Patents and registered designs: 132
- Copyright and design right 796
                                                     
8 Document IP/N/6/GBR/1.IP/Q4/GBR/1
Page 18
Within the Chancery Division, there is a specialist "Patents Court" which has exclusive
jurisdiction to hear disputes concerning patents and registered designs.  In 1996, the Patents Court
heard 221 matters (trials and interlocutories); 64 others were dealt by agreed orders or were
withdrawn.
The United Kingdom regrets that it is, at present,  unable to provide more information in
response to the question from the United States.  We will continue to seek other sources for the
information requested.  In the meantime, should the United States or any other Member of the WTO
have any specific concerns about the civil enforcemen t of intellectual property in the United Kingdom
then we would be happy to respond.
2. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1996 and 1997, including the
number of raids, prosecutions, convictions and the amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that your criminal system operates effectively to deter
copyright piracy and trademark counterfeiting.
Information in the form requested is not as a matter of course collected by the
United Kingdom Government.  Limited information is however collected, in accordance with
Article 5(2) of Commission Regulation (EC) N o. 1367/95, on the operation of Council Regulation
(EC) No. 3295/94 concerning border enforcement in relation to counterfeit and pirated goods.  Thisdata shows that for the calendar year 1996, the United Kingdom Customs Authorities made 210
seizures under Regulation No. 3295/94 resulting in over 250,000 items being seized.
In addition to the above data, we are also aware of the data (reproduced in Annex 1) emanating
from private research into product counterfeiting unde rtaken by Dr Andrew Clark of the University of
Warwick, United Kingdom
9  Whilst it is difficult for the United Kingdom Government to verify the
findings of this research, we believe that the figures contained therein provide a reasonable
assessment of the criminal enforcement of intellectual property in the United Kingdom.
The research also found that, in the period from 1 April, 1996 to 31 March, 1997, the Local
Authorities in the United Kingdom made in excess of 1,500 seizures of counterfeit and pirated goods
and equipment for use in production of such goods.  The estimated street value of the items seized
was approximately £30 million and the estimated genuine value £78.5 million.
These figures would appear to show that the criminal system operates effectively in the
United Kingdom to deter copyright piracy and trademark counterfeiting.
3. In its response to question 10.2 of  the Checklist of Issues on Enforcement,10 the
United Kingdom described the availability of Anton Piller orders.  Please describe the specific
requirements and estimated cost of obtaining such an order, and any limitations on its
execution.
The High Court practice direction (reproduced in Annex 2), which applies to all divisions of the
High Court, sets out guidelines for the assistance of those applying for Anton Piller orders and
Mareva injunctions (seizure of assets) and also for judges asked to grant such orders.  Also attached to
                                                     
9 Forthcoming publication: "Regulation of Trade in Counterfeit Goods" by Dr Andrew Clark, School of
Law, University of Warwick.  Research funded by Economic Social Research Council, Award No.
H53627502395
10 Document IP/N/6/GBR/1.IP/Q4/GBR/1
Page 19
the practice direction is a standard form to be used, unless the judge considers that there is a good
reason for not doing so, for any such order.
Applying for an Anton Piller order
In respect of making such an application, the practice direction suggests that where
practicable, the papers to be used on the application should be lodged with the judge at least two hours
before the hearing.  The guidance further suggests that the applicant should be required, in an
appropriate case, to support his cross-undertaking in damages by a payment into court or the provision
of a bond by an insurance company.
The official Court fee for an Anton Piller order is £30 although obviously solicitors' fees etc.
will need to be taken into account when considerin g the cost to the applicant of obtaining such an
order.  In the time available since receiving this additional question we have been unable to find any
statistical data covering costs associated with Anton Piller orders, however we will endeavour to
include any available data in the replies that we pr ovide to the other two follow-up questions from the
United States.
Executing the order
Part B of the practice direction sets out requirements relating to the execution of Anton Piller
orders in line with suggestions in Universal Thermosensors Ltd. v Hibben  [1992] 1 WLR; [1992] FSR
361.  These include, inter alia , the following:
(a) the order should only be served by an experienced solicitor having some familiarity
with the operation of Anton Piller orders;
(b) where the premises are likely to be occupied by an unaccompanied woman and the
supervising solicitor is a man, at least one of the persons attending on the service of
the order should be a woman;
(c) where the nature of the items removed under the order makes this appropriate, the
applicant should be required to insure them;
(d) the applicant must not, without the leave of the court, use any information or
documents obtained as a result of carrying out the order except for purposes
associated with the order.
These and the further requirements laid out in the practice direction, are not considered to
place an unreasonable burden on the applicant and are considered necessary to prevent abuses ofAnton Piller orders and to safeguard the legitimate interests of the party on whom the order is served.
V. REPLIES TO QUESTIONS POSED BY NEW ZEALAND
1. Is it correct to assume from the introductory remarks (pages 1-2) of the United
Kingdom's responses to the Checklist of Issues on Enforcement
11 that the common law of
"passing off" is the legal mechanism for protection of wine geographical indications?
The common law of passing off is one of the legal mechanisms for protecting geographical
indications for wines.  Protection for such geographical indications is also available under European
                                                     
11 Document IP/N/6/GBR/1.IP/Q4/GBR/1
Page 20
Community legislation12 and associated United Kingdom legislation, notably the Common
Agricultural Policy (Wine) Regulations 1996, as amended.
2. The United Kingdom's response to question 9 of the Checklist of Issues on
Enforcement states that "in the UK, administrative remedies for IPRs can be considered to benon-existent as a practical matter".  Can the United Kingdom confirm that this statementcovers wine geographical indications?  Could the United Kingdom also please explain therelationship of this statement to the reference in table 2 of document IP/C/W/75 of 14 July1997 to the Wine Standard Board and local authorities in the column headed  "Filing ofComplaint"? Do those bodies receive complaints initiated  by private parties or are theyresponsible for ex officio enforcement of wine geographical indications?
While for the majority of intellectual property rights, administrative remedies are effectively
non-existent there are one or two exceptions.  One of these is in respect of the protection affordedto geographical indications for wines where under the Common Agricultural Policy (Wine)Regulations 1996 the Wines Standards Board, th e local authorities, and the Commissioners of
Customs and Excise are mandated to act administratively to secure the execution and enforcementof Community provisions relating to geographical indications for wines.  Such action may beundertaken in response to a complaint filed by a private party or, more usually, will be undertaken
ex officio.
3. The United Kingdom's response to question 15(1) of the Checklist of Issues on
Enforcement
13 notes that in relation to infringement of intellectual property rights the only
specific provisions for Customs to suspend the release of goods are in respect of counterfeittrademarked and pirated goods. Does this mean that there are no specific provisions whichenforce protection of wine geographical indications at the border?
Regulation 3(4) of the Common Agricultural Policy (Wine) Regulations 1996 provides that
the Minister, the Commissioners of Customs and Excise and the Wine Standards Board shall securethe enforcement and execution of the relevant Community provisions insofar as they relate to theimportation and exportation of any wine-sector product to or from the United Kingdom.
4. The United Kingdom's response to question 21 of the Checklist of Issues on
Enforcement
13 notes that an offence under section 92 of the Trade Marks Act 1994 cannot be
committed unless "the goods in question are goods for which the mark is registered or unless
the trademark has such a reputation in the United Kingdom that its unauthorised use wouldtake unfair advantage of, or be detrimental to, the distinctive character or the repute of thetrademark".  How is this provision enforced, and would it envisage any State enforcement to
prevent misleading use of a wine geographical indication?
Under section 93 of the Trade Marks Act 1994, it is the duty of every local weights and
measures authority to enforce the provisions of section 92 (unauthorised use of trade mark & c. in
relation to goods).  To assist the local weights and measures authority in carrying out this duty, some
of the enforcement powers already available to such authorities under the Trade Descriptions Act
1968, such as power to make test purchases, power to enter premises and inspect and seize goods anddocuments, are extended so that they cover enforcement of section 92.
                                                     
12 See document IP/N/1/EEC/G/1-2.
13 Document IP/N/6/GBR/1.IP/Q4/GBR/1
Page 21
Where a wine geographical indication is the subject of a registered trademark or where it has
such a reputation in the United Kingdom that its unauthorised use would take unfair advantage of, or
be detrimental to, the distinctive character or the re pute of the trademark, then sections 92 and 93 are
applicable.
VI. REPLY TO THE QUESTION POSED BY SINGAPORE
1. The United Kingdom delegation has stated that section 92 of the UK Trade Marks Act
1994 is in compliance with Article 61 of the TRIP S Agreement.  It would appear, however, that
section 92 of the said Act provides that it is only an offence to wilfully counterfeit trademarks
registered in respect of goods.  It is however silent on whether the wilful counterfeiting of
trademarks registered in respect of services also constitutes an offence.  Please clarify if it is
indeed the case and if so, please explain the rationale for the same and whether there are any
plans to amend section 92.
Section 92 of the UK Trade Marks Act 1994 applies at present only in respect of the
unauthorised use of trademarks registered in respect of goods.  Consideration is currently being given
to the need to extend this provision to cover the unauthorised use of trademarks registered in respect
of services.
_IP/Q4/GBR/1
Page 22
ANNEX I
Criminal Statistics 1996
Table 1:  Number of prosecutions at magistrates' courts for offences under Sections 107 and 198 of
the Copyright, Designs and Patents Act 1988 by type of prosecution and result:  England and
Wales 1996
Type of proceedings
Apprehension Summons by
policeSummons other
than by policeTotal
Total prosecutions 30 9 115 154
Committed for trial 8 1 7 16
Total found guilty 17 5 78 100
Total sentenced 17 5 78 100
Disposal given:
Conditional discharge - - 1 1
Fine 12 3 60 75
Probation order 1 - 4 5
Community service order 1 1 10 12
Combination order 1 - 2 3
I m m e d i a t e  c u s t o d y 2114IP/Q4/GBR/1
Page 23
Table 2:  Number of defendants tried and/or sentenced at the Crown Court for offences under
Sections 107 and 198 of the Copyright, Designs and Patents Act 1988 by result:  England and
Wales 1996
Total
Total for trial 27
Acquitted 2
Found guilty 25
Total sentenced 25
Disposal given:
Conditional discharge 3
Fine 5
Community service order 3
Fully suspended sentence 1
Immediate custody 13
Table 3:  Number of offenders sentenced to immediate custody under Section 107 of the Copyright,
Designs and Patents Act 1988 by length of sentence and type of court:  England and Wales 1996
Length of sentence Magistrates' Court Crown Court Total
One month 2 - 1
Two months 2 - 1
Four months - 1 1
Six months - 2 …
Eight months - 1 3
Nine months - 2 3
Twelve months - 3 3
Fifteen months - 3 3
Eighteen months - 1 1IP/Q4/GBR/1
Page 24
Table 4:  Number of offenders sentenced to a fi ne under Section 107 of the Copyright, Designs and
Patents Act 1988 by amount of fine and type of court:  England and Wales 1996
Amount of fine Magistrates' Court Crown Court Total
Up to and including £25 2 - 2
Over £25 up to £50 5 - 5
Over £50 up to £100 10 - 10
Over £100 up to £150 6 1 7
Over £150 up to £200 11 1 12
Over £200 up to £250 7 1 8
Over £250 up to £300 6 - 6
Over £300 up to £500 7 2 9
Over £500 up to £750 9 - 9
Over £750 up to £1000 6 - 6
Over £1000 6 - 6
Table 5:  Number of prosecutions at magistrates courts for offences under Sections 92 and 94 of the
Trade Marks Act 1994 by type of prosecution and result:  England and Wales 1996
Type of proceedings
Apprehension Summons by
policeSummons other
than by policeTotal
Total prosecutions 154 36 289 479
Committed for trial 20 2 20 42
Total found guilty 101 23 185 309
Total sentenced 101 23 184 308
Disposal given:
Absolute discharge - - 1 1
Conditional discharge 9 3 17 29
Fine 66 11 133 210
Probation order 3 - 4 7
Community service order 13 5 22 40
Combined order 2 3 1 6
Fully suspended sentence 1 - 2 3
Young offenders institution - - 1 1
Immediate custody 6 1 2 9
Otherwise dealt with 1 - 1 2IP/Q4/GBR/1
Page 25
Table 6:  Number of defendants tried and/or sentenced at the Crown Court for offences under
Sections 92 and 94 of the Trade Marks Act 1994 by result:  England and Wales 1996
Total
Total for trial 62
Not tried 1
Acquitted 11
Found guilty 50
Total sentenced 52
Disposal given:
Conditional discharge 6
Fine 18
Probation order 3
Community service order 10
Combined order 1
Fully suspended sentence 2
Immediate custody 11
Otherwise dealt with 1
Table 7:  Number of offenders sentenced to immediate custody under Sections 92 and 94 of the Trade
Marks Act 1994 by length of sentence and type of court:  England and Wales 1995
Length of sentence Magistrates' Court Crown Court Total
One month 1 -
Two months 4 - 1
Three months 2 3 1
Four months 2 - 1
Five months - 1 1
Six months 1 2 1
Nine months - 1 1
Ten months - 1 ?
Twelve months - 1 ?
Eighteen months - 2 2IP/Q4/GBR/1
Page 26
Table 8:  Number of offenders sentenced to a fine under Sections 92 and 94 of the Trade Marks
Act 1994 by amount of fine and type of court:  England and Wales 1995
Amount of fine Magistrates' Court Crown Court Total
Up to and including £25 5 - 5
Over £25 up to £50 24 2 26
Over £50 up to £100 65 2 67
Over £100 up to £150 23 1 24
Over £150 up to £200 16 1 17
Over £200 up to £250 17 1 18
Over £250 up to £300 12 - 12
Over £300 up to £500 24 5 29
Over £500 up to £750 7 - 7
Over £750 up to £1000 9 4 13
Over £1000 8 2 10
The above tables are taken from a forthcoming publication "Regulation of Trade in
Counterfeit Goods", by Dr. Andrew  Clark, School of Law, Univers ity of Warwick.  Research funded
by Economic Social Research Council, Award No. H53627502395.IP/Q4/GBR/1
Page 27
ANNEX 2
617
[No. 18] 29 December 1994 [1994] R.P.C.
In the High Court of Justice
Practice Direction
Mareva Injunctions and Anton Piller Orders
Injunction - Mareva injunction: - Practice: - Standard form of order -
Cross-undertaking in damages.
Practice - Discovery - Anton Piller order - Practice -
Standard form of order - Execution.
1. The granting of a Mareva injunction or Anton Piller order is a matter for the discretion of the
judge hearing the application.  However, it is desirable that a consistent approach should in general beadopted in relation to the form and carrying out of such orders, since they represent serious
restrictions on the rights of those persons subjected to them imposed after hearing only the applicant's
case on an ex parte  application.  This practice direction set out guidelines for the assistance of judges
and those who apply for these orders.
2. Attached to this practice direction are new st andard forms of the following orders: Annex 1 -
Anton Piller order: Annex 2 - worldwide Mareva injunction: Annex 3 - Mareva injunction limited to
assets within the jurisdiction.  These forms, inevitably, are complicated, but their language and layout
are intended to make it easier for persons served with these orders to understand what they mean.
These forms of order should be used save to the extent that the judge hearing a particular applicationconsiders there is a good reason for adopting a different form.
3. The following matters should be borne in mind in relation to an ex parte  application for any
of these orders.
A. 
ON AN APPLICATION FOR EITHER A MAREVA OR AN ANTON PILLER ORDER
(1) Where practicable the papers to be used on the application should be lodged with the
judge at least two hours before the hearing.
(2) An applicant should be required, in an appropriate case, to support his
cross-undertaking in damages by a payment into court or the provision of a bond by
an insurance company.  Alternatively, the judge may order a payment by way of suchsecurity to the applicant's solicitor to be held  by the solicitor as an officer of the court
pending further order.
(3) So far as practicable, any application for the discharge or variation of the order should
be dealt with effectively on the return date.IP/Q4/GBR/1
Page 28
618
Practice Direction: Mareva Injunctions and [1994] R.P.C.
Anton Piller Orders
B. ON AN APPLICATION FOR AN ANTON PILLER ORDER
(1)(a) As suggested in Universal Thermosensors Ltd v. Hibben  [1992] 1 W.L.R. S40. 861*
the specimen order provides for it to be served by a supervising solicitor and carried
out in his presence and under his supervision.  The supervising solicitor should be an
experienced solicitor, having some familiarity with the operation of Anton Piller
orders, who is not a member or employee of the firm acting for the applicant.  The
evidence in support of the application should include the identity and experience of
the proposed supervising solicitor.
(b) If in any particular case the judge does not think it appropriate to provide for the
order to be served by a supervising solicitor, his reasons should be expressed in the
order itself.
(2) Where the premises are likely to be occupied by an unaccompanied woman and the
supervising solicitor is a man, at least one of the persons attending on the service of
the order should be a woman.
(3) Where the nature of the items removed under the order makes this appropriate, the
applicant should be required to insure them.
(4) The applicant should undertake not to inform any third party of the proceedings until
after the return date.
(5) In future, applications in the Queen's Bench Division will no longer be heard by the
judge in chambers.  In both Chancery  and Queen's Bench Division, wherever
practicable, applications will be listed before a judge in such a manner as to ensure
that he has sufficient time to read and consider the paper in advance.
(6) On circuit, applications will be listed before a High Court judge or a circuit judge,
sitting as a judge of the High Court specially designated by the presiding judge to
hear such applications.
4. If an Anton Piller order or Mareva  injunction is discharged on the return date, the judge
should always consider whether it is appropriate that he should assess damages at once and direct
immediate payment by the applicant.
5. This practice direction is made by the Lord Chief Justice with the concurrence of the
President of the Family Division and the Vice-Chancellor.  It applies to all divisions of the High
Court.
28 July 1984Lord Taylor of Gosforth C.J.
Sir Stephen Brown P.
Sir Donald Nicholls V.-C
                                                     
*[1992] F.S.R 361.IP/Q4/GBR/1
Page 29
ANNEX 1
[CASE No: ]
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
MR. JUSTICE
BETWEEN
Plaintiff
and
Defendant
ORDER TO ALLOW ENTRY AND SEARCH OF PREMISES
IMPORTANT:
NOTICE TO THE DEFENDANT
(1) This Order orders you to allow the persons mentioned below to enter the premises described
in the Order and to search for, examine and remove or copy the articles specified in the Order.This part of the Order is subject to restrictions.  The Order also requires you to hand over any
of the articles which are under your control and to provide information to the Plaintiff's
solicitors, and prohibits you from doing certain acts.  You should read the terms of the Order
very carefully.  You are advised to consult a solicitor as soon as possible.
(2) Before you the Defendant or the person appearing to be in control of the premises allow
anybody onto the premises to carry out this Order you are entitled to have the solicitor who
serves you with this Order explain to you what it means in every day language.
(3) You are entitled to insist that there is nobody [or nobody except Mr. …] present who could
gain commercially from anything he might read or see on your premises.
(4) You are entitled to refuse to permit entry before 9.30 a.m. or after 5.30 p.m. or at all on
Saturday and Sunday.
(5) You are entitled to seek legal advice, and to ask the Court to vary or discharge this Order,
provided you do so at once, and provided that meanwhile you permit the Supervising Solicitor(who is a solicitor acting independently of the Plaintiff) and the Plaintiff's solicitor to enter,
but not start to search: see paragraph 3.
(6) If you … the Defendant disobey this Order you will be guilty of contempt of Court and may
be [sent to prison or] fined or your assets seized.
14
                                                     
14Delete the words "sent to prison" in the case of a corporate Defendant.  This notice is not a substitute
for the endorsement of a penal notice.IP/Q4/GBR/1
Page 30
THE ORDER
An application was made today [date] by counsel [or solicitors] for … the Plaintiff to
Mr. Justice [        ].  Mr. Justice [       ] heard the application and read the affidavits listed in
Schedule 6 at the end of this Order.
As a result of the application IT IS ORDERED by Mr. Justice [       ] that:
Entry and search of premises and vehicles on the premises
1. (1) The Defendant must allow Mr./Mrs./Miss … ("the Supervising Solicitor"), together
with Mr. … a solicitor or the Supreme C ourt, and a partner in the firm of the
Plaintiff's solicitors … and up to … other persons being … [their capacity]accompanying them, to enter the premises mentioned in Schedule 1 to this Order and
any vehicles on the premises so that they can search for, inspect, photograph or
photocopy, and deliver into the safekeeping of the Plaintiff's solicitors all the
documents and articles which are listed in Schedule 2 to this Order ("the listed
items") or which Mr. … believes to be listed items.  The Defendant must allow thosepersons to remain on the premises until the search is complete, and if necessary to
re-enter the premises on the same or the following day in order to complete the
search.
(2) This Order must be complied with either by the Defendant himself or by a responsible
employee of the Defendant or by the person appearing to be in control of the
premises.
(3) This Order requires the Defendant or his employee or the person appearing to be in
control of the premises to permit entry to the premises immediately the Order isserved upon him, except as stated in paragraph 3 below.
Restrictions on the service and carrying out of paragraph 1 of this Order
2. Paragraph 1 of this Order is subject to the following restrictions:-
(1) This Order may only be served between 9.30 a.m. and 5.30 p.m. on a weekday.(2) This Order may not be carried out at the same time as any police search warrant.(3) This Order must be served by the Supervising Solicitor, and paragraph 1 of the Order
must be carried out in his presence and under his supervision.  [At least one of thepersons accompanying him as provided by paragraph 1 of the Order shall be a
woman.]
15
(4) This Order does not require the person served with the Order to allow anyone [or
anyone except Mr. … ] who could gain commercially from anything he might read orsee on the premises if the person served with the Order objects.
(5) No item may be removed from the premises until a list of the items to be removed has
been prepared, and a copy of the list has been supplied to the person served with the
Order, and he has been given a reasonable opportunity to check the list.
                                                     
15The words in brackets in (3) are to be included in a case where the premises are likely to be occupied
by an unaccompanied woman and the Supervising Solicitor is a man.IP/Q4/GBR/1
Page 31
(6) The premises must not be searched, and items must not be removed from them,
except in the presence of the Defendant or a person appearing to be a responsible
employee of the Defendant.
(7) If the Supervising Solicito r is satisfied that full compliance with subparagraph (5) or
(6) above is impracticable, he may permit the search to proceed and items to beremoved without compliance with the impracticable requirements.
Obtaining legal advice and applying to the Court
3. Before permitting entry to the premises by any person other than the Supervising Officer and
the Plaintiff's solicitors, the Defendant or other person appearing to be in control of the premises may
seek legal advice, and apply to the Court to vary or discharge this Order, provided he does so at once.
While this is being done, he may refuse entry to the premises by any other person, and my refuse topermit the search to begin, for a short time (not to exceed two hours, unless the Supervising Solicitor
agrees to a longer period).
Delivery of listed items and computer print-outs
4. (1) The Defendant must immediately hand over to the Plaintiff's solicitors any of the
listed items which are in his possession or under his control.
(2) If any of the listed items exists only in  computer readable form, the Defendant must
immediately give the Plaintiff's solicitors effective access to the computers, with all
necessary passwords, to enable them to be searched, and cause the listed items to beprinted out.  A print out of the items must be given to the Plaintiff's solicitors or
displayed on the computer screen so that they can be read and copied.  All reasonable
steps shall be taken by the Plaintiff to ensure that no damage is done to any computer
or data.  The Plaintiff and his representatives may not themselves search the
Defendant's computers unless they have sufficient expertise to do so withoutdamaging the Defendant's system.
Disclosure of information by the Defendant
5. (1) The Defendant must immediately inform the Plaintiff's solicitors:
(a) where all the listed items are;  and
(b) so far as he is aware:
(i) the name and address of everyone who has supplied him, or offered
to supply him, with listed items;
(ii) the name and address of everyone to whom he has supplied, or
offered to supply, listed items; and
(iii) full details of the dates and quantities of every such supply and offer.
(2) Within … days after being served with this Order the Defendant must prepare and
swear an affidavit confirming the above information.IP/Q4/GBR/1
Page 32
Prohibited acts
6. (1) Except for the purpose of obtaining legal advice, the Defendant must not directly or
indirectly inform anyone of these proceedings or of the contents of this Order, or
warn anyone that proceedings have been or may be brought against him by the
Plaintiff until [    ]16
(2) [Insert any negative injunctions.]
EFFECT OF THIS ORDER
(1) A Defendant who is an individual who is orde red not to do something must not do it himself
or in any other way.  He must not do it th rough others acting on his behalf or on his
instructions or with his encouragement.
(2) A Defendant which is a corporation and which is ordered not to do something must not do it
itself or by its directors, officers, employees or agents or in any other way.
UNDERTAKINGS
The Plaintiff, the Plaintiff's solicitors and th e Supervising Solicitor gave to the court the
undertakings contained in Schedules 3, 4 and 5 respectively to this Order.
DURATION OF THIS ORDER
Paragraph 6(2) of this Order will remain in force up to and including [  :  :19  ] (which is "the
Return Date"), unless before then it is varied or discharged by a further Order of the Court.17  The
application in which this Order is made shall come back to the Court for further hearing on the Return
Date.
VARIATION OR DISCHARGE OF THIS ORDER
The Defendant (or anyone notified of this Order) may apply to the court at any time to vary or
discharge this Order (or so much of it as affects that person), but anyone wishing to do so must firstinform the Plaintiff's solicitors.
NAME AND ADDRESS OF PLAINTIFF'S SOLICITORS
The Plaintiff's solicitors are:[Name, address and telephone numbers both in and out of office hours.]
[ INTERPRETATION OF THIS ORDER
(1) In this Order "he", "him" or "his" include "she" or "her" and "it" or "its".
(2) Where there are two or more Defendants then (unless the context indicates 
differently).
                                                     
16The date to be inserted here should be the return date or, if sooner, seven days from the date of the
Order.
17The date should be the practicable return date.IP/Q4/GBR/1
Page 33
(a) References to the "Defendants" mean both or all of them.
(b) An Order requiring "the Defendants" to do or not to do anything requires each
Defendant to do or not to do it.
(c) A requirement relating to service of this Order, or of any legal proceedings on "the
Defendants" means on each of them.
(d) Any other requirement that something shall be done to or in the presence of "the
Defendants" means to or in the presence of one of them.]
SCHEDULE 1
The Premises
SCHEDULE 2
The Listed Items
SCHEDULE 3
Undertaking given by the Plaintiff
(1) If the Court later finds that this Order or ca rrying it out has caused loss to the Defendant, and
decides that the Defendant should be compensate d for that loss, the Plaintiff will comply with
any order the Court may make.
(2) As soon as practicable to issue a writ of summons [in the form of the draft writ produced to
the Court] [claiming appropriate relief].
(3) To [swear and file an affidavit] [cause an affidavit to be sworn and filed] [substantially in the
terms of the draft produced to the Court] [confirming the substance of what was said to the
Court by the Plaintiff's counsel/solicitors].
(4) To serve on the Defendant at the same time as this Order is served upon him (i) the writ (ii) a
notice of motion/summons for    :    19   and (iii) copies of the affidavit and copiable exhibits
containing the evidence relied on by the Plaintiff.  [Copies of the confidential exhibits …
[specify] need not be served, but they must be made available for inspection by or on behalf
of the Defendant in the presence of the Plaintiff's solicitors while the Order is carried out.
Afterwards they must be provided to a solicitor representing the Defendant who gives awritten undertaking not to permit the Defendant to see them or copies of them except in his
presence and not to permit the Defendant to make or take away any note or record of the
exhibits].
(5) To serve on the Defendant a copy of the Supervising Solicitor's report on the carrying out of
this Order as soon as it is received and to produce a copy of the report to the Court.
(6) Not, without the leave of the Court, to use any information or documents obtained as a result
of carrying out this Order except for the purposes of these proceedings or to inform anyone
else of these proceedings until after the Return Date.IP/Q4/GBR/1
Page 34
(7)18
SCHEDULE 4
Undertakings given by the Plaintiff's Solicitors
(1) To answer at once to the best of their ability any question whether a particular item is a listed
item.
(2) To return the originals of all documents obtain ed as a result of this Order (except original
documents which belong to the Plaintiff) as soon as possible and in any event within two
working days of their removal.
(3) While ownership of any item obtained as a result of this Order is in dispute, to deliver the
article into the keeping of solicitors acting for the Defendant within two working days from
receiving a written undertaking by them to retain the article in safe keeping and to produce it
to the Court when required.
(4) To retain in their own safe keeping all other items obtained as a result of this Order until the
Court directs otherwise.
SCHEDULE 5
Undertaking as given by the Supervising Solicitor
(1) To offer to explain to the person served with the Order its meaning and effect  fairly and in
everyday language, and to inform him of his right to seek legal advice and apply to vary or
discharge the Order as mentioned in paragraph 3 of the Order.
(2) To make and provide the plaintiff's solicitor a written report on the carrying out of the Order.
SCHEDULE 6
The judge read the following affidavits before making the Order.
(1)
_______________
(2)
__________
                                                     
18In appropriate cases an undertaking to insure the items removed from these premises shall be
included.