Civil steps

Quite aside from any criminal complaint (please click here for more information) the owner of an intellectual property right may wish to institute, it is of course still open to such person to bring a civil application in the High Court for an order declaring certain goods to be counterfeit and ordering their delivery-up.

In addition, special statutory provision is made in the CGA for the granting of Anton Piller-type orders to preserve evidence relating to counterfeiting activities (Section II of the CGA).

Where counterfeiting activities are suspected on reasonable grounds, an ex parte application may be brought before a judge in chambers for an order directing the sheriff or another designated person to enter any place or premises, to search, seize and remove documents, records and alleged counterfeit goods. The order may also direct the disclosure by the respondent of any documents, information and material.

Before an ex parte order will be granted, there must be a prima facie case of infringement of an intellectual property right and the judge must be satisfied that the usual procedure for the discovery of evidence is likely to be frustrated because of the concealing or destruction of evidence.

Safeguards against abuse of the procedure, include:

• the right of the respondent to have his or her attorney present during the execution of the order;
• the compulsory preparation of an inventory of any documents, records or goods seized or removed;
• the filing of a statement under oath with the court by the applicant’s attorney reporting the search.