Resolving IP Disputes at Trade Fairs
The European IPR Helpdesk, an EU-funded collaboration between Infeurope SA, Eurice GmbH and L'Institut de la Propriété Intellectuelle Luxembourg to provide free, first-line advice and information on intellectual property, has recently published two fact sheets on IP and trade fairs. The first, which is entitled Intellectual property management at trade fairs, is addressed to exhibitors at, and visitors to, trade fairs while the second, IP considerations for trade fair organisers, is addressed to organizers. Both fact sheets were developed in co-operation with the European Major Exhibition Centres Associaton and the European Exhibition Industry Alliance,
Intellectual property management at trade fairs starts with "Things you should know before participating in a trade fair." These include "Knowing the IPRs you own", "Registration is the easiest and most effective way to fight against infringers", "IP protection is territorial", "Time limits for extending protection in another country", "Intangible assets to be kept confidential" and "The limitations of trade fair organisers." It continues with a list of "Dos" and "Don'ts" some of which are to be done or abstained from before the event, others during the event and yet more afterwards.
IP considerations for trade fair organisers starts with the observation:
"Trade fairs and exhibitions are great opportunities for manufacturers and service providers to exhibit their state-of-the-art products and services. They are also a chance to analyse market tendencies and competitors’ products: nowhere else can a company compare its own products with those of its competitors as easily as at exhibitions. Therefore, it is not surprising that sometimes, during these events, exhibitors may find some products infringing their intellectual property rights (IPR)."
The fact sheet suggests a number of initiatives that can be taken to reduce the risk of infringement while acknowledging that "trade fair organisers are not in a position to determine with certainty an IP infringement, nor have the right to directly sue prospective IP infringers, as only right holders are allowed to enforce their IPR." Those initiatives include contract terms prohibiting infringement of third parties' IPR and facilitating rapid and cost-effective dispute resolution where infringement is alleged.
The fact sheet discusses two dispute resolution schemes. In Italy, there is an Intellectual Property Service Regulation for the quick and cost-effective resolution of infringement disputes at trade fairs. That appears to provide a form of alternative dispute resolution somewhat more akin to expert determination than arbitration. In Geneva, the WIPO provides a Fast-Track Intellectual Property Dispute Resolution Procedure for Palexpo Trade Fairs which covers all intellectual property disputes except those relating to patents (see art 2 (c) of the rules). The procedure has been used at the Geneva Motor Shows in 2015, 2016 and 2017 and the Index17 non-woven textile show this year. It will be available at next year's Geneva International Motor Show.
There appears to be nothing like the Italian or Palexpo models here. If an IP owner objects to the exhibition of an item on the grounds that it will infringe his IPR he must look to the courts for redress. All civil courts except the small claims track of the Intellectual Property Enterprise Court ("IPEC") have power to grant interim injunctions to restrain threatened infringements. In order to obtain such relief, the IP owner has to issue proceedings in the Chancery Division (or the Patents Court or IPEC if the claim relates to patents, registered designs, semiconductor topographies or plant breeders' rights) and apply for an interim injunction under Part 25 of the Civil Procedure Rules ("CPR") and Practice Direction 25A - Interim Injunctions.
The application is decided in accordance with the principles set out by Lord Diplock in American Cyanamid Co (No 1) v Ethicon Ltd  UKHL 1,  AC 396,  FSR 593,  2 WLR 316,  1 All ER 504. The applicant does not have to show that he will win at this stage, only that he can win. The applicant must promise to pay damages to the respondent for any loss or damage that the respondent may suffer as a result of the order that he seeks. The applicant must satisfy the judge that he will sustain loss or damage that cannot adequately be compensated by an award of damages if the respondent is not restrained, that the respondent will suffer less than the applicant if he is restrained and that the applicant can compensate the respondent adequately in damages should it transpire that the order should never have been made.
All this takes time. CPR 23.7 (1) (b) requires notice of the application to be served at least 3 clear days before the hearing though that period can be abridged. Paragraph 6 of the Practice Direction - Pre-Action Conduct and Protocols expects the parties to have exchanged information and documents before the issue of proceedings. That is not a problem when the IPR owner has advance notice of the respondent's intention to exhibit an allegedly infringing item at a trade fair but sometimes the IPR owner's first inkling of a possible infringement is when he sees his competitor's device on a stand.
The English courts have procedures to deal with that situation. An application can be made to a judge whenever the court is sitting, or even out of hours by telephone. Wherever possible the respondent should be notified of the time and place of the application, but an order can even be made by telephone in the absence of the respondent and before a claim form has been issued in an urgent case. Where that happens the applicant must put before the court all the evidence and arguments that he would expect the respondent to have used. That is a very heavy burden on the applicant's legal representatives because any order that the court may make can be discharged if it transpires that the applicant has failed to make full and frank disclosure of all relevant materials.
Litigation is unsarisfactory for all concerned. It is unsatisfactory for the IPR owner because it is expensive even to issue a claim form (see HMCTS Civil and Family Court Fees from 6 March 2017). The costs of issuing an application notice and counsel's and solicitors' fees for draftings and preparing court documents have to be added to that expense. The applicant's promise to pay damages may be enforced at the end of litigation if the case goes badly for him for any reason. He has the heavy responsibility to make full and frank dosclosure to the court. Litigation is unsatisfatcory for the alleged infringer even if he wins because he sustains the indignity of removing items from his stand. It is also bad for the exhibition organizer for there to be gaps on his exhibitor's stand.
The legal basis for the Palexpo scheme is contractual, namely "the Conditions for Participation provided by Palexpo as applicable for the respective trade fair, and the Rules for the Fast-Track Procedure."There is no reason why exhbition organizers should not introduce a similar scheme here.