Background
In November 2012, a company B (B) filed a utility model application for an invention 'Attachment arrangement'. The invention consisted of independent claim 1 and dependent claims 2-5. The Finnish Patent and Registration Office (PRH) registered the utility model (no. 9968) on 28 January 2013.
| Utility Model Registration no. 9968. |
In 2014, a company A (A) lodged an invalidity claim against the registered utility model. The A provided prior art documents D1-D8. In 2015, the A added a prior art document D9. Basically the A wanted to prove that it has been selling an apparatus that is identical with the utility model and that these sales have occurred before the B filed the utility model application in 2012.
In 2015, PRH confirmed in its decision that the documents D2-D4 and D9 cover the apparatus described in the claim 1 of the registered utility model no. 9968. However, PRH decided to reject the invalidation claim because the documents D2-D4 and D9 are based on a communication between two companies and an internal activity in those companies. This kind of communication or activity is not considered to be a material that has become available to the public.
The documents D2-D4 provided proof of how the A has ordered a company C (C) to manufacture and deliver a mold of an apparatus that is, allegedly, similar to the apparatus described in the claim 1 of the registered utility model. In the document D9, the A provided evidence of how it has started to manufacture the apparatus based on a mold ordered from the C and provided information on the sales of that apparatus. All this had occurred before the B filed the utility model application in 2012.
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1. Investigate and copy or otherwise preserve:
a) the received and sent emails, including attachments, inter alia, (i) between the B and the C.
b) electronic documents and other files regarding the registered utility model no. 9968 or regarding other apparatus similar to the utility model.
2. Seize the physical papers and drawings regarding the registered utility model no. 9968 or regarding other apparatus similar to the utility model.
3. Seize all the prototypes, if the B has such, that the C has manufactured for the A.
Furthermore, the A requested the court to order the injunction without giving the B opportunity to be heard.
The Market Court issued its decision 325/16 on 3 June 2016.
The Market Court
According to section 1 paragraph 2 of the Act on Securing Evidence in Civil Matters concerning Industrial Rights and Copyrights (344/2000), the Act is applied to a situation in which, inter alia, an entrepreneur has unjustifiably used or revealed a business secret, a technical model or technical instructions.
According to section 2 of the Act, the court can give a seizure order concerning any material that can have a significance in the case in question. The opposing party shall not suffer undue inconvenience in comparison with the benefit to be secured (comparison of interest / unreasonable inconvenience). According to section 3 of the Act, the rightholder needs to demonstrate that it is probable that he or she has a right that is enforceable against the opposing party, and the right is being infringed or that such infringement is imminent (claim requirement). Furthermore, there is a danger that the opposing party, or the one who has the material, conceals, destroys or hands over the evidence or in some other manner endangers the preservation of the evidence (danger requirement).
According to section 2 of the Act, the court can give a seizure order concerning any material that can have a significance in the case in question. The opposing party shall not suffer undue inconvenience in comparison with the benefit to be secured (comparison of interest / unreasonable inconvenience). According to section 3 of the Act, the rightholder needs to demonstrate that it is probable that he or she has a right that is enforceable against the opposing party, and the right is being infringed or that such infringement is imminent (claim requirement). Furthermore, there is a danger that the opposing party, or the one who has the material, conceals, destroys or hands over the evidence or in some other manner endangers the preservation of the evidence (danger requirement).
According to section 4 of the Act, the court can, on request, order the interim injunction without giving the defendant opportunity to be heard, if the purpose of the injunction is otherwise endangered.
According to section 5 paragraph 1 of the Act, a bailiff can use, if necessary, an unchallengeable expert. The applicant of the injunction, or his/her representative, can act as an expert if it is likely that he/she will not unjustifiably obtain any other business or trade secrets.
1. Claim requirement
The A provided evidence that the figure eight of the registered utility model no. 9968 is identical with the drawings that the A sent to the C in 2010. The court stated that the A has an enforceable right against the B and the claim requirement is therefore fulfilled. The court stated also that at least part of the material, targeted by the injunction, has a significance in the case.
The A provided evidence that the figure eight of the registered utility model no. 9968 is identical with the drawings that the A sent to the C in 2010. The court stated that the A has an enforceable right against the B and the claim requirement is therefore fulfilled. The court stated also that at least part of the material, targeted by the injunction, has a significance in the case.
The A argued that the B has received material from the C and used it in the utility model application. Therefore, the email correspondence between the B and the C may have a significance as an evidence. The court agreed and stated that the relevant time period is between 2010 and 28 November 2012.
Otherwise the court rejected the requests no. 1-3 because it could not evaluate whether the material targeted in those requests would have a significance regarding the unjustifiable use or reveal of a technical model, i.e. the requests were not specific enough.
Otherwise the court rejected the requests no. 1-3 because it could not evaluate whether the material targeted in those requests would have a significance regarding the unjustifiable use or reveal of a technical model, i.e. the requests were not specific enough.
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| Utility Model Registration no. 9968, Fig. 8. |
2. Danger requirement
The court referred to earlier Supreme Court rulings 1994:132 and 1994:133 where the Supreme Court has ruled that the danger requirement is fulfilled if the danger is not very improbable based on the circumstances in the case.
According to the A, it is likely that the B has some of the targeted material described in the interim injunction application. Taking into account the alleged bad faith behavior described above, there is a danger that the B conceals, destroys or hands over the evidence or in some other manner endangers the preservation of the evidence before the main proceedings. The court agreed and stated that the danger requirement is sufficiently fulfilled.
3. Comparison of interest / unreasonable inconvenience
The court considered that, as mentioned above, it is justifiable to order the interim injunction only regarding the request 1 (a)(i), i.e. the email correspondence, including attachments, between the B and the C between 2010 and 28 November 2012. Furthermore, the material is ordered to be left in the bailiff's possession. Since the injunction is ordered in a restrictive form like this, the opposing party B is not going to suffer undue inconvenience in comparison with the benefit to be secured. The comparison of interest / unreasonable inconvenience requirement is thus fulfilled.
The court considered that, as mentioned above, it is justifiable to order the interim injunction only regarding the request 1 (a)(i), i.e. the email correspondence, including attachments, between the B and the C between 2010 and 28 November 2012. Furthermore, the material is ordered to be left in the bailiff's possession. Since the injunction is ordered in a restrictive form like this, the opposing party B is not going to suffer undue inconvenience in comparison with the benefit to be secured. The comparison of interest / unreasonable inconvenience requirement is thus fulfilled.
The court also considered that there is a reason to order the interim injunction without giving the defendant opportunity to be heard.
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Therefore, the Market Court ordered a bailiff to carry out the following measure in the business premises of the B:
- Investigate and copy or otherwise preserve the received and sent emails, including attachments, between the B and the C between 2010 and 28 November 2012.
The bailiff can use, if it is necessary, an unchallengeable expert who is obliged to follow the rules of confidentiality and prohibition of exploitation.
A prerequisite for the entry into force of the interim injunction is that the applicant applies for enforcement of a precautionary measure as provided in chapter 8 of the Enforcement Code (705/2007).
According to chapter 8 section 2 paragraph 1 of the Enforcement Code, enforcement of a precautionary measure requires that the applicant lodges with the bailiff security for loss that the respondent may incur as a result of the precautionary measure.
The A has to apply the enforcement not later than 13 June 2016. Furthermore, the A has to deliver a document covering the description and results of the enforcement not later than 20 June 2016.
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