1 Definitions

1. In this Order, unless the context or subject matter otherwise requires—

the “1992 Act” means the Patents Act 1992 (No. 1 of 1992);

the “1996 Act” means the Trade Marks Act 1996 (No. 6 of 1996);

the “2000 Act” means the Copyright and Related Rights Act 2000 (No. 28 of 2000);

the “2001 Act” means the Industrial Designs Act 2001 (No. 39 of 2001).

the “2019 Act” means the Copyright and Other Intellectual Property Law Provisions Act 2019 (No. 19 of 2019);

“intellectual property claim” has the same meaning as in section 2 of the 2000 Act.

2 Requirements of this Order additional to Order 40

2. (1) The provisions of this Order apply to intellectual property claims in the Court.

(2) The requirements of this Order are additional to the requirements of Order 40 as regards claim notices.

3 Additional particulars required in claim notice in intellectual property claim

3. (1) An intellectual property claim notice must:

(i) state the registered number of any registered intellectual property right to which the claim relates;

(ii) set out full particulars of the ownership of any unregistered intellectual property right concerned in the proceedings, or of the right of the claimant to claim infringement;

(iii) include particulars of the nature and extent of any intellectual property right relied upon by the claimant (including the capacity in which the claimant sues if not the registered proprietor or proprietor of the intellectual property right concerned);

(iv) include particulars of the nature and extent of the alleged infringement of any intellectual property right relied on by the claimant;

(v) set out the material facts relied on in support of the intellectual property claim;

(vi) state specifically the relief sought against each respondent and every provision or rule of law relied on in support of each such relief and, where relief under the 1992 Act, 1996 Act, 2000 Act and/or 2001 Act is sought, the particular provisions under which relief is sought and the grounds for each such relief;

(vii) set out clearly the basis upon which the Court has jurisdiction to hear and determine the intellectual property claim;

(viii) set out the appropriate costs in the Schedule of Costs payable if the claimant’s claim is settled before appearance and defence.

(2) A claim notice in an intellectual property claim must be in accordance with Form 40.01 Schedule C with the modifications necessitated by this rule.

4 Service of claim notice

4. A claim notice in an intellectual property claim must name as respondent, and must be served on, every person against whom relief is sought.

5 Civil application for delivery up

5. (1) An application to the Court in or by way of a civil proceeding for the delivery up of:

(i) infringing goods, material or articles under section 20 of the 1996 Act; or

(ii) an infringing article, copy, or device under section 131 of the 2000 Act; or

(iii) an illicit recording, article or device under section 255 of the 2000 Act; or

(iv) an infringing product or article under section 61 of the 2001 Act

may be made ex parte to any sitting of the Court for the Court District wherein it is believed that the infringing matter concerned is or are in the possession, custody of control of any person.

(2) The application may be grounded upon an information on oath and in writing by or on behalf of the proprietor of the registered trade mark concerned, or the copyright owner or a person having rights conferred by Part III of the 2000 Act or the registered proprietor or his or its authorised representative, as the case may be.

(3) Where an application has been made, and remains undetermined, in a criminal proceeding, for the delivery up of some or all of the same article(s), copies, devices or products, an application under this rule shall not be determined until the determination of the application in the criminal proceeding.

6 Court may direct service of notice of application for delivery up

6. (1) The Court may adjourn an application under rule 5 and direct that person against whom relief is sought be served with notice of the application, in the Form 40F.01, Schedule C, by personal service or by prepaid registered post, on the respondent thereto and on any other person directed by the Court to be served with such notice.

(2) If served personally, the notice must be served at least seven days before the date of the sitting of the Court to which it is returnable; if served by prepaid registered post, the notice must be served at least 14 days before the date of the sitting of the Court to which it is returnable.

7 Form of order for delivery up

7. An order made on an application under rule 5, whether ex parte or inter partes, may be in the Form 40F.02, Schedule C.

8 Civil application for erasure etc of offending sign or for forfeiture or disposal

8. (1) Subject to sub-rule (4), an application to the Court in or by way of a civil proceeding for:

(i) an order to cause an offending sign to be erased, removed or obliterated from any infringing goods, material or articles, or to secure the destruction of infringing goods, materials or articles under section 19 of the 1996 Act, or

(ii) an order for the destruction or forfeiture of infringing goods, material or articles under section 23 of the 1996 Act, or

(iii) an order for the forfeiture or disposal of an infringing copy, article or, device under section 145 of the 2000 Act, or

(iv) an order for the forfeiture or disposal of an illicit recording, article or device under section 264 of the 2000 Act, or

(v) an order for the forfeiture or disposal of an infringing product or article under section 72 of the 2001 Act,

must be in the Form 40F.03, Schedule C, and must be served by the applicant, by personal service or by prepaid registered post:

(a) on the respondent thereto,

(b) on any other person appearing to have an interest in the goods, materials, articles, copies, devices or products concerned, and

(c) on any other person directed by the Court to be served.

(2) If served personally, the notice must be served at least seven days before the date of the sitting of the Court to which it is returnable; if served by prepaid registered post, the notice must be served at least 14 days before the date of the sitting of the Court to which it is returnable.

(3) Where an application has been made, and remains undetermined, in a criminal proceeding, for the delivery up of some or all of the same article(s), copies, recordings, devices or products, an application under this rule shall not be determined until the determination of the application in the criminal proceeding.

(4) Notwithstanding sub-rules (1), (2) and (3), the Court may, where it has determined an intellectual property claim, determine an application under section 19 of the 1996 Act made orally to the Court concerning infringing goods, material or articles which were the subject of that intellectual property claim, without the necessity for the issue of a further notice of application, provided that the Court is satisfied that all persons having an interest in the infringing goods, material or articles are before the Court and have had an opportunity to be heard.

9 Form of order for erasure etc of offending sign or for forfeiture or disposal

9. An Order of the Court on an application under rule 8 may be in the Form 40F.04, Schedule C.