CHECKLIST OF ISSUES ON ENFORCEMENT[1]
Responses
from Seychelles
Civil and Administrative Procedures and
Remedies
(a) Civil
judicial procedures and remedies
1. Specify the courts which have jurisdiction over IPR infringement
cases.
1.1 The
jurisdiction over IPR infringement cases is being conferred to the Supreme
Court of Seychelles. In the event of an
appeal, the Court of Appeal has jurisdiction.
Section
124 of the Industrial Property Act stipulates that the Supreme Court shall have
jurisdiction in disputes relating to the application to this Act and the
Regulations and in matters which under this act referred to the Court.
1.2 With regards to
copyright, the law is not clear. However, it seems that both the Supreme Court
and the Magistrates Court have jurisdiction.
Section 108 (3) states that: The Court may
order cumulative remedies as it deems appropriate.
2. Which persons have standing to assert IPRs? How may they be
represented? Are there requirements for mandatory personal appearances before the
court by the right holder?
2.1 Which persons have standing to assert IPRs?
The holder of industrial property rights or
the person authorized by him or her has standing to assert IPRs.
2.2 How may they be represented?
It is the right holder or the person
authorized by him/her who may assert their IPRs as per Section 108 (2)
of the Industrial Property Act which states that:
"The
holder of industrial property rights or the person authorized by him or her may
seek for any or more or all of the remedies referred to in subsection (1)".
2.3 Are there requirements for mandatory personal appearances before
the court by the right holder?
There are no mandatory requirements for
appearances before the court by the right holder.
Section 107 - Chapter 1, under the
General Provision paragraph (b) states that: the procedures shall not impose
overly burdensome requirements concerning mandatory personal appearances.
Section 107 paragraph (c) states that:
Parties to a legal proceeding shall be allowed to be represented by independent
legal counsel.
3. What authority do the judicial authorities have to order, at the
request of an opposing party, a party to a proceeding to produce evidence which
lies within its control?
At the request of an opposing party, the
Judicial Authorities may order banking, financial and commercial authority to
produce evidence which lies within their control.
Section 110, paragraph (1) states that: The
Court may, where a party has presented reasonably available evidence sufficient
to support its claims and has specified evidence relevant to substantiation of
the claims which lies in the control of the opposing party, order that this
evidence be produced by the opposing party, subject, in appropriate cases, to
conditions which ensure the protection of confidential information.
Section 110, paragraph (2) states
that: Where infringement is committed in a commercial scale, the Court may,
upon request of a party or when found appropriate, order the production of
communication of banking, financial or commercial documents under the control
of the opposing party, subject to the protection of confidential information.
4. What means exist to identify and protect confidential information
brought forward as evidence?
Section 109, paragraph (3) states
that: In ordering the production of evidence to the contrary, the Court shall
take into account the legitimate interests of the alleged infringer in not
disclosing his or her manufacturing and business secrets.
Section 110 (1) states that: The Court may,
where a party has presented reasonably available evidence sufficient to support
its claims and has specified evidence relevant to substantiation of the claims
which lies in the control of the opposing party, order that this evidence be
produced by the opposing party, subject, in appropriate cases, to conditions
which ensure the protection of confidential information.
Section 110 (2) states that: Where
infringement is committed in a commercial scale, the Court may, upon request of
a party or when found appropriate, order the production of communication of
banking, financial or commercial documents under the control of the opposing
party, subject to the protection of confidential information.
5. Describe the remedies that may be ordered by the judicial
authorities and criteria, legislative or jurisprudential, for their use:
- injunctions;
- damages, including recovery of profits,
and expenses, including attorney's fees;
- destruction or other disposal of
infringing goods and materials/implements for their production;
- any other remedies.
Section 108 (1) states that: The remedies
against infringement of industrial property rights, made available under this
Act include —
(a)
Provisional measures;
(b)
Civil remedies; and
(c)
Criminal remedies.
Section 108 (2) further states that: The
holder of industrial property rights or the person authorized by him or her may
seek for any or more or all of the remedies referred to in subsection 1.
And Section 108 (3) states that: The Court
may order cumulative remedies as it deems appropriate.
5.1 Damages: Section 112 (1)
states that: The Court shall order the infringer, who knowingly, or with
reasonable grounds to know, engaged in infringing activity, to pay damages
adequate to compensate for the injury the rights holder has suffered because of
an infringement of his or her industrial property right.
Section 112 (2) states that: In
determining the amount of damages awarded to the rights holder, the Court may
consider –
(a) The value of the infringed-on
goods or service, measured by the suggested retail price or other legitimate
measure of value submitted by the right holder;
(b) The loss of earnings incurred by the rights
holder;
(c) The unfair profits made by the infringer;
(d) The royalties or fees
which would have been due if the infringer had requested authorization to use
the industrial property right in question; and
(e) Where appropriate, any moral damages caused to
the right holders.
Section 112 (3) states that: The
Court shall order the infringer to pay the rights holder’s expenses, which may
include appropriate attorney's fees.
Section 112 (4) states that: The
Court may, where appropriate, order recovery of profits where the infringer did
not knowingly, or with reasonable grounds to know, engage in infringing
activity.
5.2 Destruction: Section 113 (3)
states that: The Court may, whenever this is considered adequate under the
circumstances to create an effective deterrent to further infringement, taking
due account of the need for proportionality between the seriousness of the
infringement and the remedies and the legitimate interests of third parties,
order that the infringing goods be destroyed, or be disposed of outside the
channels of commerce, without compensation of any sort, in such a manner as to
avoid any harm caused to the rights holder.
5.3 Other
Remedies: Section 113 (1) states
that: The Court may, upon the request of the applicant, order that goods,
materials and implements the predominant use of which has been in the creation
of the infringing goods be, without compensation of any sort, disposed of
outside the channels of commerce in such a manner as to minimize the risks of
further infringements.
Section 113 (2) states that: In considering
such requests, the need for proportionality between the seriousness of the
infringement and the remedies ordered and the interests of third parties shall
be taken into account.
Section 113 (4) states that: In respect of
counterfeit goods, the simple removal of the mark or geographical indication
unlawfully affixed shall not be sufficient, other than in exceptional cases, to
permit release of the goods into the channels of commerce.
6. In what circumstances, if any, do judicial authorities have the
authority to order the infringer to inform the right holder of the identity of
third persons involved in the production and distribution of the goods or
services found to be infringing and of their channels of distribution?
The judicial authorities have the authority
to order the infringer to inform the rights holder of the identity of third
persons involved in the production and distribution of the infringing goods or
rendering of services and of their channels of distribution unless this would
be out of proportion to the seriousness
of the infringement.
Section 114 states that: The Court shall
order the infringer to inform the rights holder of the identity of third
persons involved in the production and distribution of the infringing goods or
rendering of services and of their channels of distribution unless this would
be out of proportion to the seriousness of the infringement.
7. Describe provisions relating to the indemnification of defendants
wrongfully enjoined. To what extent are public authorities and/or officials
liable in such a situation and what "remedial measures" are
applicable to them?
7.1 Provisions relating to the indemnification of defendants wrongfully
enjoined.
In cases where a defendant has been
wrongfully enjoined or restrained, adequate compensations should be provided
for the injury suffered because of such abuse.
Section 115 (1) states that: The Court
shall order an applicant, at whose request measures were taken and who has
abused enforcement procedures, to provide to a defendant wrongfully enjoined or
restrained adequate compensation for the injury suffered because of such abuse.
Section 115 (2) states that: The Court
shall order the applicant to pay the defendant expenses, which may include
appropriate attorney's fees.
7.2 To what extent are public authorities and/or officials liable in
such a situation and what "remedial measures" are applicable to them?
Public authorities are exempted from
liability to appropriate remedial measures where actions were taken and/or
intended in good faith.
Section 115 (3) states that: The
public authorities and officials shall be exempted from liability to
appropriate remedial measures where actions were taken or intended in good
faith in the course of the administration of any law pertaining to the
protection or enforcement of industrial property rights.
8. Describe provisions governing the length and cost of proceedings.
Provide any available data on the actual duration of proceedings and their
cost.
8.1 Length of proceedings
Any civil proceedings shall be initiated within
5 years from the date on which the rights holder knew or had reasons to know
the infringing acts, except in case of infringing use of distinctive signs in
based faith or for unfair competition purposes, for which there shall be no
time to initiate the proceedings.
8.2 Cost of proceedings
(b) Administrative
procedures and remedies
9. Reply to the above questions in relation to any administrative
procedures on the merits and remedies that may result from these procedures.
Administratively based on the order of the
Court, depending on the type of order from the Court, relevant stakeholders
(Ministries, Agencies, Authorities, Departments, etc…) will have to act upon
the Court Order.
Any decision by the Court in infringement
proceedings shall be subject to an appeal in the Court of Appeal. The appeal
shall be filed within 60 days from the date of the decision.
Section 116 (1) states that: Any decision
by the Court in infringement proceedings shall be subject to an appeal to the
Court of Appeal.
Section 116 (2) states that: The appeal shall be filed within 60 days from
the date of the decision.
Provisional
Measures
(a) Judicial measures
10. Describe the types of provisional measures that judicial authorities
may order, and the legal basis for such authority.
Section 111 states that: The Court shall
have power to order prompt and effective provisional measures, to —
(a)
Prevent an infringement of a right
from occurring, in particular to prevent the entry into channels of commerce,
imported goods after completing customs formalities; and
(b)
Preserve relevant evidence in regard to
the alleged infringement.
(2) The
Court shall have power to order provisional measures, without giving the other
party an opportunity of being heard, where appropriate, in particular where any
delay is likely to cause irreparable harm to the rights holder, or where there
is a demonstrable risk of evidence being destroyed.
(3) The
Court may, before making a decision under subsection (2), require the applicant
to provide any reasonably available evidence in order to satisfy it with a
sufficient degree of certainty that the applicant is the rights holder and that
the applicant's right is being infringed or that such infringement is imminent,
and order the applicant to provide a security or equivalent assurance
sufficient to protect the defendant and to prevent abuse.
(4) Where
provisional measures have been ordered without giving the other party an
opportunity of being heard, the defendant may file a request for review with
the Court within 2 weeks from the date of receipt of the decision.
(5) In
the review proceedings, the Court shall give the parties concerned an
opportunity of being heard and shall confirm, modify or revoke the decision
within a reasonable period.
(6) The
applicant may be required to supply other information necessary for the
identification of the goods concerned by the authority that will execute the
provisional measures.
(7) Where
the applicant does not initiate proceedings in the Court leading to a decision
on the merits of the case within 20 working days or 31 calendar days, whichever
is longer, from the date of receipt of the decision ordering provisional
measures or within any other reasonable period determined by the Court in the
decision, the Court shall revoke the provisional measures upon request of the
defendant.
(8) Where
the provisional measures are revoked or where they lapse due to any act or
omission by the applicant, or where it is subsequently found that there has
been no infringement or threat of infringement of an industrial property right,
the Court shall order the applicant, upon request of the defendant, to provide
the defendant appropriate compensation for any injury caused by these measures.
11. In what circumstances may such measures be ordered inaudita altera parte?
Where any delay is likely to cause
irreparable harm to the rights holder, or where there is a demonstrable risk of
evidence being destroyed.
Section 111 (2) states that: The Court
shall have power to order provisional measures, without giving the other party
an opportunity of being heard, where appropriate, in particular where any delay
is likely to cause irreparable harm to the rights holder, or where there is a
demonstrable risk of evidence being destroyed.
12. Describe the main procedures for the initiation, ordering and
maintenance in force of provisional measures, in particular relevant
time-limits and safeguards to protect the legitimate interests of the
defendant.
Section 111 (3) states that: The Court
may, before making a decision under subsection (2), require the applicant to
provide any reasonably available evidence in order to satisfy it with a
sufficient degree of certainty that the applicant is the rights holder and that
the applicant's right is being infringed or that such infringement is imminent,
and order the applicant to provide a security or equivalent assurance
sufficient to protect the defendant and to prevent abuse.
Section 111 (6) states that: The
applicant may be required to supply other information necessary for the
identification of the goods concerned by the authority that will execute the
provisional measures.
13. Describe provisions governing the length and cost of proceedings.
Provide any available data on the actual duration of proceedings and their
cost.
Section 111 (4) states that: Where
provisional measures have been ordered without giving the other party an
opportunity of being heard, the defendant may file a request for review with
the Court within 2 weeks from the date of receipt of the decision.
Section 111 (5) states that: In the
review proceedings, the Court shall give the parties concerned an opportunity
of being heard and shall confirm, modify or revoke the decision within a
reasonable period.
Section 111 (7) states that: Where the
applicant does not initiate proceedings in the Court leading to a decision on
the merits of the case within 20 working days or 31 calendar days, whichever is
longer, from the date of receipt of the decision ordering provisional measures
or within any other reasonable period determined by the Court in the decision,
the Court shall revoke the provisional measures upon request of the defendant.
(b) Administrative
measures
14. Reply to the above questions in relation to any administrative
provisional measures.
Section 111 (8) states that: Where the
provisional measures are revoked or where they lapse due to any act or omission
by the applicant, or where it is subsequently found that there has been no
infringement or threat of infringement of an industrial property right, the
Court shall order the applicant, upon request of the defendant, to provide the
defendant appropriate compensation for any injury caused by these measures.
Special
Requirements Related to Border Measures
15. Indicate for which goods it is possible to apply for the suspension
by the customs authorities of the release into free circulation, in particular
whether these procedures are available also in respect of goods which involve
infringements of intellectual property rights other than counterfeit trademark
or pirated copyright goods as defined in the TRIPS Agreement (footnote to
Article 51). Specify, together with relevant criteria, any imports excluded
from the application of such procedures (such as goods from another member of a
customs union, goods in transit or de
minimis imports). Do the procedures apply to imports of goods put on
the market in another country by or with the consent of the right holder and to
goods destined for exportation?
Regulation 77 (1)
of Customs Management Regulations, 2014 (S. I. 42 of 2014) states that: A
rights holder may submit an application to Customs, in accordance with the
procedures and under the conditions set out in this Chapter, for the suspension
of customs clearance of imported goods that are suspected of being infringing
goods.
Regulation 78 (1)
further states that Customs shall suspend clearance of the goods if satisfied
that the goods are infringing goods covered by the application allowed under
Regulation 77 (3).
Chapter 13 of the Customs Management
Regulations, 2014, covering Border Measures for Protection of Intellectual
Property Rights, does not provide any information about imports excluded from
the application of such procedures (such as goods from another member of a
customs union, goods in transit or de
minimis imports).
The aforementioned Regulations also do not provide information about such
procedures in regards to imports of goods put on the market in another country
by or with the consent of the right holder and to goods destined for
exportation.
16. Provide a description of the main elements of the procedures
relating to the suspension of the release of goods by customs authorities, in
particular the competent authorities (Article 51), the requirements for an
application (Article 52) and various requirements related to the duration of
suspension (Article 55). How have Articles 53 (security or equivalent
assurance), 56 (indemnification of the importer and of the owner of the goods)
and 57 (right of inspection and information) been implemented?
According to Regulation 78 (1) of the
Customs Management Regulations, 2014, the suspension of clearance of goods
shall be effective for 90 days unless the rights holder -
(a)
Requested a shorter period; or
(b)
Applied for action in cases of specific
shipments.
Regulation 78 (3) stipulates that Customs shall refuse to
suspend clearance of goods unless the rights holder furnishes to Customs a
security in the manner and amount that Customs may reasonably require to
indemnify itself against any liability that may be incurred pursuant to such
suspension, and to cover any expenses that may be incurred in effecting the
suspension.
Regulation 78 (4) further states that
Customs shall inform all Customs offices immediately of the suspension with
full particulars to enable them to act in accordance with the terms of the
suspension.
(5) The
Customs shall immediately inform the following persons of the suspension of the
clearance of the goods and the reason therefore in writing —
(a)
The importer, exporter, consignee or
the consignor where their identity is known to Customs; and
(b)
The applicant.
(6) The rights holder shall inform Customs
when his intellectual property right ceases to be valid or if he ceases to be
the owner of the right for any reason whatsoever, in which event the
application or suspension shall lapse.
In terms of application issues, Regulation
79 states that: A decision taken by Customs on refusal of the application shall
be subject to the appeal in accordance section 32 of the Act.
17. Describe provisions governing the length and cost of proceedings.
Provide any available data on the actual duration of proceedings and their
cost. How long is the validity of decisions by the competent authorities for
the suspension of the release of goods into free circulation?
There are no specific provisions detailing
the length and cost of proceedings. This is determined on a case-by-case basis.
In light of the fact that to date there has
not been any case relating to infringement of border measures we currently do
not have data on the duration of such proceedings.
According to Regulation 78 (2) of the
Customs Management Regulations, 2014 "the suspension of clearance of goods
.... Shall be effective for 90 days unless the rights holder —
(a) requested
a shorter period; or
(b) applied
for action in cases of specific shipments."
18. Are competent authorities required to act upon their own initiative
and, if so, in what circumstances? Are there any special provisions applicable
to ex officio action?
Yes. Competent authorities may act upon
their own initiatives in respect of which it has acquired prima facie evidence that the goods are infringing goods; or where there are reasonable
grounds to suspect that the goods are infringing goods.
Section 80 (1) states that: The Customs
may, on its own initiative, suspend the clearance of goods —
(a)
In respect of which it has acquired prima facie evidence that the goods are infringing goods; or
(b)
Where there are reasonable
grounds to suspect that the goods are infringing goods.
19. Describe the remedies that the competent authorities have the
authority to order and any criteria regulating their use.
Section 81 (1) states that: Where Customs
determines that goods are infringing goods, Customs may, upon the request by
the rights holder, order that the goods be forfeited and destroyed, where the
rights holder has provided adequate evidence to the satisfaction of Customs
that the goods are infringing goods, and -
(a)
the importer, the exporter, the
consignee, the consignor, the owner of the goods, or the declarant who has been
served by Customs with a notice of suspension, has been informed about the
possibility of confiscation and destruction or disposal of goods and does not
oppose the measure within 60 days after having been served the notice; or
(b)
if after reasonable efforts by Customs
the importer, exporter, consignee, consignor, the owner of the goods, or the
declarant has not been identified, Customs may, without a court order and
without the request of the rights holder, forfeit and destroy or dispose of the
goods.
(2) The
Customs shall, while making an order under sub regulation (1), take the
following into consideration —
(a)
disposal shall be outside the normal
channels of commerce and in such a manner so as to minimize the risks of
further infringements, and without detriment to the rights of the rights
holder;
(b)
the rights holder’s proposed manner of
destruction or disposal; and
(c)
the effect on the environment of the
manner of destruction.
(3) The
Customs may, with the consent of the rights holder, retain samples of the
infringing goods for the purpose of training or education of Customs officials.
Criminal
Procedures
20. Specify the courts which have jurisdiction over criminal acts of
infringement of IPRs.
The Supreme Court has jurisdiction over
criminal acts of infringement of IPRs and, in the event of an appeal, the Court
of Appeal has jurisdiction.
21. In respect of which infringements of which intellectual property
rights are criminal procedures and penalties available?
Criminal procedures and penalties are
available when:
1. Any
person, who except under justifiable circumstances provided under the Act,
without consent of a patent or utility model right holder, wilfully and on
commercial scale, as defined under Section 118 (1) paragraph (a), (b); (c) and
(d); and
2.
Any person who, except under justifiable
circumstances provided under this Act, without the authorization of a registered
industrial design rights holder, wilfully and on a commercial scale, as defined
under Section 118 (2) paragraph (a); (b) and (d); and
3.
Any person who, without the authorization
of registered mark rights holder, wilfully and on a commercial scale, as defined
under Section 118 (3) paragraph (a); (b) and (c) and Section 118 (4) paragraph (a)
and (b), commits an offence.
Section 119 (1) states that: Whoever
intentionally commits an offence under Section 118, shall on conviction be
liable to imprisonment for a term not exceeding 5 years or a fine not exceeding
SCR500,000 or with both such imprisonment and fine.
Section 119 (2) further states that: Except
where higher penalty is provided in any other written law, whoever by
negligence violates a right protected under this Act shall on conviction be
liable to imprisonment for a term not exceeding 3 years or a fine not exceeding
SCR500,000 or with both such imprisonment and fine.
22. Which public authorities are responsible for initiating criminal
proceedings? Are they required to do this on their own initiative and/or in
response to complaints?
The police and authorized officers or
authorities have the power to investigate a complaint or on its initiative
investigate into possible infringement(s). However, it is the Attorney
General's Office that has the power to initiate/institute any criminal
proceedings as per Section 76(4) (a) of the Constitution of Seychelles which
stipulates that:
"4.
The Attorney General shall be the
principal legal adviser to the Government and, subject to clause (11), shall
have power, in any case in which the Attorney General considers it desirable so
to do -
a).
to institute and undertake criminal
proceedings against any person before any court in respect of any offence
alleged to have been committed by that person;"
In addition, Section 60 of the Criminal
Procedure Code states that:
"60.
(1) The Attorney General is vested
with the right of prosecuting all crimes and offences over which the Courts of
Seychelles have jurisdiction.
(2)
The right and power of
prosecuting vested in the Attorney General is absolutely under his management
and control and any officer who may be appointed a public prosecutor under
section 63 shall be under the control of the Attorney General and be bound to
conform to any direction which shall or may be given to him by the Attorney
General."
Section 120 of the Industrial Property Act
states that:
(1)
A police officer may arrest without
warrant any person who, in any street or public place -
(a)
sells, exposes or offers for sale
or hire; or
(b)
has, or is reasonably suspected of
having, in his or her possession for the purpose of selling or letting for
hire, any product that infringes industrial property rights protected in
Seychelles.
(2)
Any authorized officer may, at any time,
without a warrant —
(a)
stop, search and board, whether
forcibly or otherwise, any conveyance in which he or she reasonably suspects
that there is any infringing product; and
(b)
seize, remove or detain such infringing
product and anything which appears to him or her to be or to contain; or to be
likely to contain, evidence of an offence under this Act.
(3)
In the exercise of his or her power under
subsection (2), an authorized officer may order the person in charge of a
vehicle —
(a)
to stop and not to proceed until so
authorized; or
(b)
to bring the vehicle to any police
station.
23. Do private persons have standing to initiate criminal proceedings
and, if so, who?
A private person may institute criminal
proceedings but they have to have permission from the president as per Section
66 (1) of the Criminal Procedure Code which states that:
"The
Judge or any Magistrate inquiring into or trying any case may permit the
prosecution to be conducted by any person, but no person other than a public
prosecutor or other officer generally or specially authorised by the President
in this behalf shall be entitled to do so without permission. With the like
permission, any manager or employee may prosecute for an offence committed to
the prejudice of his principal or employer."
As per Section 68 of the Criminal Procedure
Code, a person may institute proceedings by making a complaint to a Judicial
Officer (in the context of Seychelles a Judicial Officer is namely, Judge,
Master, a senior Magistrate, a Magistrate, a Justice of the Peace or the
Registrar).
24. Specify, by category of IPR and type of infringement where
necessary, the penalties and other remedies that may be imposed:
- imprisonment;
- monetary fines;
- seizure, forfeiture and destruction of
infringing goods and materials and implements for their production;
- other.
In cases of wilful trademark counterfeiting
or copyright piracy on a commercial scale, penalties and remedies such as
imprisonment, monetary fines, seizure is applicable.
Any type of infringement pertaining to "Certification
mark"; "collective mark"; any product under the patented
invention, protect by utility model certificate; "counterfeit goods; "goods
infringing industrial property rights"; "industrial design";
"integrated circuit"; "invention"; and "layout-design"
is liable to imprisonment, monetary fines, seizure, forfeiture and destruction
of infringing goods and materials and implements for their production.
25. Describe provisions governing the length and any cost of
proceedings. Provide any available data on the actual duration of proceedings
and their cost, if any.
The length of proceedings is not governed
by any law, as this is left to the discretion of the court and will depend on a
case-by-case basis depending on the severity of the case.
In
a criminal case the cost will be borne by the state as it will be the state
prosecuting against an accused.
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[1] Document IP/C/5
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