WIPO Webinar for Judges: Provisional Measures Governing the Search and Seizure of Evidence – Considering Anton Piller Orders, the Saisie-contrefaçon, and Related Mechanisms
April 8, 2024
In the adjudication of intellectual property (IP) disputes, many jurisdictions make available provisional measures providing the right to search premises and seize evidence without prior warning. In common law jurisdictions, these measures are commonly known as Anton Piller orders, the name a reference to a 1975 English case. Anton Piller orders and related mechanisms are intended to prevent the destruction of relevant evidence, as well as to obtain evidence of the existence and extent of an alleged infringement.
In France and other civil law countries, courts widely use the saisie-contrefaçon mechanism as a means of obtaining evidence in IP infringement cases. When authorized by a judge, the saisie-contrefaçon enables an IP rights holder to call upon a designated official to record an infringement, with that official empowered to enter any place where the infringement might be observed and to seize evidence of the infringement. Anton Piller orders and the saisie-contrefaçon typically operate as ex parte procedures, requiring no notification to or representation of the targeted party.
Join the next WIPO Webinar for Judges to learn from the insights and experiences of Judge Malik Chapuis (Third Chamber, First Instance Court of Paris, France), Justice Michael Manson (Federal Court, Ottawa, Canada), and Justice David Unterhalter (Gauteng Division, High Court, Johannesburg, South Africa), for an interactive webinar exploring issues such as:
- Provisional measures governing the search and seizure of evidence in both common and civil law jurisdictions;
- Model orders providing for the search and seizure of evidence, including a draft “Model Anton Piller Order” excerpted from the book Intellectual Property Disputes: Resolutions and Remedies;
- Cases where the grant or review of provisional evidentiary measures has been considered by courts, including the decisions of the Federal Court of Canada in Vinod Chopra Films v John Doe et al., 2010 FC 387 and the High Court of South Africa, Western Cape Division in ADP Marine & Modular Proprietary Limited v Rocher and Others (5701/2022) [2023] ZAWCHC 225;
- Use of the saisie-contrefaçon procedure by French courts as a means of obtaining evidence to prove infringement of IP rights, with reference to an illustrative decision;
- Factors considered by courts in examining an application for an Anton Piller order or a saisie-contrefaçon; and
- Specific challenges for judges in adjudicating IP cases involving provisional measures governing the search and seizure of evidence.
Judge, Third Chamber, First Instance Court of Paris, France
Justice, Federal Court, Ottawa, Canada
Justice, Gauteng Division, High Court, Johannesburg, South Africa
The webinar will be conducted on May 2, 2024 (16.00 – 17.30 CEST, find your local time) in English and French, with simultaneous interpretation in Arabic, Chinese, English, French, Russian and Spanish. Participation is open only to judges of courts and adjudicators of quasi-judicial appeal bodies of Intellectual Property Offices.
Please register in order to participate in the webinar. Registration will be open until 18.00 on April 29, 2024 (CEST). For any questions, contact the WIPO Judicial Institute.
Background: What are Anton Piller orders and the saisie-contrefaçon?
In addition to any available civil remedies or criminal sanctions, an IP rights owner may, under certain conditions, seek provisional measures to prevent infringement and the entry of infringing goods into the market, and/or to facilitate the collection and preservation of relevant evidence. Article 50.1 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement provides that judicial authorities shall have the authority to order prompt and effective provisional measures:
(a) to prevent an infringement of any intellectual property right from occurring and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance;
(b) to preserve relevant evidence in regard to the alleged infringement.
In relation to this second purpose served by provisional measures – the collection and preservation of evidence regarding an alleged infringement – important judicial mechanisms exist, commonly known as Anton Piller orders in countries of common law tradition and as the saisie-contrefaçon in countries of civil law tradition. Anton Piller orders and the saisie-contrefaçon function similarly to enable the search of premises and seizure of evidence.
Anton Piller orders, named after the 1975 English case of Anton Piller KG v Manufacturing Processes Limited [1975] EWCA Civ 12, or similar mechanisms exist in common law jurisdictions. An Anton Piller order is a form of provisional injunctive relief that provides a complainant the right to search a defendant’s premises and seize evidence without prior warning. Considering the intrusive nature of Anton Piller orders, which are obtained through ex parte proceedings, certain requirements must be satisfied for a court to grant such an order, and the moving party must disclose all material facts. The criteria considered by courts in examining an application for an Anton Piller order are often enumerated in the case law of the jurisdiction in question.
The saisie-contrefaçon, permitted in civil law countries, is widely used in France. Like Anton Piller orders, the saisie-contrefaçon functions as a means of obtaining evidence of the existence and extent of IP rights infringement. In authorizing the saisie-contrefaçon measure, a judge enables the petitioning IP rights holder to call upon a bailiff (in the French context) or comparable official to enter any place where the alleged infringement might be observed, as well as to seize items of evidence of the infringement. The obligations of European Union Member States regarding measures to preserve evidence are discussed in Article 7 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.
Both Anton Piller orders and the saisie-contrefaçon are granted through ex parte proceedings, with the party targeted by the measure not informed of the proceedings or able to participate therein.