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Demonstrable Risk to the Evidence
18-70 The Court requires a higher standard of proof that there is a risk that the evidence will
disappear or be destroyed in an ex parte action as opposed to an inter partes action; r.197(1)
RoP requires that the risk to the evidence has to be “demonstrable”. The test would be fulfilled
where there is a suggestion of fraud or other criminal behaviour or where the defendant has a
track record of evading the Court’s orders relating to evidence production or destroying or
tampering with documents. But this does not mirror the practice in countries where a saisie is
available under national law. In such countries, the procedure is deliberately kept ex parte
because of the general presumption that, if the defendant was notified in advance, the evidence
would disappear or be tampered with, and there are insufficient controls and sanctions
available against such a party. The time, cost and efforts needed to obtain reliable evidence via
inter partes proceedings – where an alleged infringer can raise multiple defences to prevent or
delay the production of the evidence – are often so disproportionate in comparison with those
for an ex parte saisie, that the latter proceeding is systematically preferred.
18-71 Whether the Court will adopt a similar practice depends on a number of factors, including the
fact that the Court has no power to hold a party in contempt of court for obstruction of the
proceedings or failing to comply with an order nor can it impose financial penalties for such
issues. However, there is no suggestion that the Court will start from the presumption that the
defendant will destroy or dispose of the evidence.
Irreparable Harm to the Applicant
18-72 The Court will consider, should the saisie not be granted, the harm that could occur to the
applicant and whether it is “irreparable” i.e. harm which cannot later be reversed or adequately
compensated for by some other measure. The RoP only require that the Court consider the
harm to the applicant of not granting the saisie and not the harm to the defendant.
18-73 Irreparable harm is a familiar requirement of preliminary injunctions where courts, for example
in the Netherlands and Germany, consider the potential harm to the parties more than any
assessment of the underlying merits of the infringement allegation. 98 In the absence of
irreparable harm to the rights holder, the Court is unlikely to grant a provisional injunction,
particularly if the infringement has already commenced.
18-74 Although an intrusive measure when ordered ex parte, a saisie does not stop a defendant from
trading in the goods which are the subject of the seizure, nor does it stop the defendant from
conducting its day-to-day business. In this way it is far less draconian than a provisional
injunction and, arguably, the same high standard should not apply.
Safeguards for the Defendant
18-75 Since making an intrusive order without notice is contrary to the normal rules of justice, an
applicant who makes a request for an ex parte saisie becomes subject to a duty of full and frank
disclosure. In particular, the applicant must disclose to the Court any material fact known to it
which might influence the Court in deciding whether to make an order without hearing the
defendant. 99 This is consistent with practices in countries where such measures are granted
systematically on an ex parte basis. For example, in France, an applicant has a special duty of
loyalty to the court regarding the case which requires the applicant to disclose all relevant facts
to the presiding judge even if they are damaging to the claim being made. If an important fact is
not disclosed, the order could be revoked and the seizure considered void.
98
99
Irreparable harm is also the term used in art.9(4) Enforcement Directive.
r.192(3) RoP. See also chapter 16 (Provisional and Protective Measures) paragraphs 16-59 to 16-62 relating to the duty of the
applicant in making an application for a provisional injunction. The same points apply in relation to an application for a saisie.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 361
