Nigeria: Anton Piller Order, Class Actions and Injunctions in Nigeria

Most acts of infringement of intellectual property right only become known to the owner of the right when the product or the tangible expression of the infringement is made available to the public.

Thus the retail trader selling the infringing product is the first person the owner of the right can identify as an infringer of his intellectual property right.

The owner of intellectual property right however knows that the retail trader is often, not the source of the infringing product, he is usually at the very end of the chain of distribution. Unfortunately, given the suspicion which the average Nigerian trader has for a stranger asking questions, the owner of the intellectual property right is not likely to quickly find out the name of the person who supplies the retail trader with the offending product.

Without being able to identify the source of the product in the market, the right owner is left with the option of suing the retailers. However, where the infringing product is being widely sold all over the country, retailers selling the infringing product will be so numerous that it will be impossible to sue each one of them individually.

On the other hand, without being able to bring all retailers of the infringing product within the ambit of a court order, the circulation of the offending product will not be stopped. The rights owner therefore needs to sue all the traders by suing a few of them as representatives of the rest of them.

The rights owner is also cognizant of the fact that if the retailers he intends to sue as representatives of all others, become aware that they are being sued, they are likely to get rid of all the infringing goods in their possession, particularly when the goods are obviously infringing.

The foregoing scenario is typical of the situation normally faced by the average intellectual property right owner in Nigeria when he has an infringement problem. Therefore a significant proportion of intellectual property right infringement action instituted in Nigeria are commenced with the plaintiff seeking the following three orders ex-parte:

1. The leave of the court to sue named defendants as representatives of all other persons dealing in the offending product.

2. An Anton Piller order, to enable access to be gained into the defendant’s premises for the purpose of taking possession of infringing products and documentary evidence of the volume of dealing in the infringing product to be found therein.

3. An interim injunction to restrain the defendants and the represented class from selling the offending product until the determination of the motion on notice filed at the same time as the motion ex-parte.

The purpose of this paper is mainly to identify current Nigerian practice with regards to these order. In the process, where the practice is found to require clarification by the courts, suggestions in that regard will be made.

The Anton Piller order is an order of court, made ex-parte and requiring a defendant or respondent to allow certain persons to enter his premises to search for documents and movable articles as are specified in the court order, and to permit such documents or articles to be taken away.

The first Anton Pillar order made in Nigeria was made by Anyaegbunam C.J. in Ferodo Limited v. Unibros Stores¹ in 1980 following the persuasive authority of the decision of the English Court of Appeal in Anton Piller KG v. Manufacturing Processes Ltd.² (the case from which the order took its name).

The next reported decision of a Nigerian court on the Anton Piller order was the decision of Belgore J in Oluwanishola Development Co. v. Guines Insurance Co. Ltd³. In refusing to grant an Anton Piller order as prayed in that decision, Belgore J did not disapprove of the order, he however disapproved of the variation to the order as prescribed in the Anton Piller case sought to be introduced in the Nigerian context. He ruled that it did not accord with the order prescribed in the Anton Piller case to order that the party serving the order should include a senior official of the court as well as policemen. He expressed the view that to involve officers of the court in the execution of the order would be to involve the court in the contest between the parties. He also ruled that to authorize policemen to accompany the team would be to give the order the colouration of a search warrant which it was not.

Subsequent to that decision, Belgore J (later C.J) granted several Anton Piller orders. He also softened his view regarding the presence of the police in the raiding team. He recognized that in the Nigerian environment, a group of persons seeking to serve an Anton Piller order in a market run a very high risk of being attacked by a mob. He therefore would allow a specified number of policemen to accompany the team serving the order but only for the purpose of keeping the peace.

After the above mentioned decisions in the 1980s there were at least two decisions⁴ of the Federal High Court in early 1990s in which the court refused to grant Anton Piller orders on the ground that to do so would be to breach the right to fair hearing enshrined in the Constitution. Subsequently though, both judges who gave the decisions have changed their minds and have been granting Anton Piller orders since then.

Recently however the question whether the grant of an Anton Piller order would breach the constitutional right of fair hearing appears to have been settled by the Court of Appeal in Akuma Ind. Ltd v. Ayman Ent. Ltd⁵. The issue was raised in that appeal. In the decision of the court on that issue, Pats-Acholonu JCA stated: "Indeed Anton Pillar order although seemingly appearing as a monstrosity has become accepted within the vortex of our legal doctrines and jurisprudence."

It is therefore to be regarded as settled that Anton Piller order is a remedy available in the Nigerian jurisprudence.

The Anton Piller Order is an order made in the exercise of the inherent jurisdiction of the court to do justice as occasion demands. The ex-parte nature of the order takes it out of reach of the normal rules of court authorizing inspection and discovery. Those rules require notice of an application in that regard to be given to the respondent.

The Anton Piller order is an order in personam. It is addressed to the respondent ordering him to permit the persons serving the order enter his premises and do therein, all the things which the order authorises them to do.

Lord Denning in his judgment in the Anton Piller case (at page 60) emphasized the fact that the order is not a search warrant which would empower entry into the respondent’s premises without his consent. He stated that the court had no authority to issue a search warrant in support of a civil action. Hence the respondent under an Anton Piller order has to give consent to the applicant to enter his premises otherwise the applicant cannot.

Though the respondent can refuse to permit the applicant to enter his premises, in view of the fact that the court has ordered him to give such permission, he runs the risk of a committal for contempt of court if he refuses.

In consideration of the drastic nature of the order, and given the fact that the respondent will not be heard before the order is made, Lord Denning in the Anton Piller case emphasized that the order should only be made:

"When it is necessary in the interest of justice ……. But only in an extreme case where there is grave danger of property being smuggled away or of vital evidence being destroyed"⁶

In the Consultation Paper on Anton Piller Order published by the Lord Chancellor in England in 1992 four pre-conditions for the making of an Anton Piller order were identified⁷. It is submitted that theses are the same principles governing the grant of an Anton Piller order in Nigeria:

1. There must be a strong prima facie case of a civil cause of action. The approach prescribed in American Cynamid –v- Ethicon⁸ is not appropriate.

2. The danger to the plaintiff to be avoided by the grant of an Anton Piller order must be serious. If an order is sought in order to forestall the destruction of evidence, the evidence in question must be major, if not critical, in importance.

3. The risk of destruction or removal of evidence must be a good deal more than merely possible. There must be a real reason to believe that the respondent will disobey an injunction for the preservation of the evidence in question.

4. The harm likely to be caused by the execution of the Anton Piller order to the respondent and his business affairs must not be excessive or out of proportion to the legitimate object of the order.

Recommendations concerning the execution of the Anton Piller order were made by the Sir Donald Nicholls V-C in Universal Thermosensors v. Hibben⁹. He recommended that an Anton Piller Order should contain provisions to ensure that

1. The defendant should be able in fact as well as entitled in theory to take immediate legal advice before having to comply with the order. Therefore, Anton Piller Orders should be executed only on working days in office hours when a solicitor can be expected to be available.
2. In the event of service at a private house a woman solicitor should serve the order if a woman is likely to be alone at the house.
3. A list of all items to be removed should be prepared.
4. Service at business premises should be in the presence of a responsible officer of the party served.
5. The applicant should not have carte blanche to search a competitor’s files
6. Service and execution should preferably be by an experienced and independent solicitor rather than the solicitor acting for the plaintiff
7. The solicitor should provide a written report to the defendant and the court for the inter partes hearing

In Nigeria, there has been no judicial pronouncement or practice direction to regulate the execution of the Anton Piller Order. It is suggested that the above-mentioned recommendations of Sir Donald Nicholls V-C be considered and adopted.

The judicial view has been expressed¹⁰ that section 22 of the Copyright Act constitutes the statutory authority for granting an Anton Piller order in respect of Copyright infringement litigation. One respectfully wishes to disagree with that view.

An Anton Piller order requires the permission of the respondent before entry can be gained into his premises. The provision of section 22 of the Copyright Act empowers the court to authorize entry without the need to seek the permission of the respondent. The provision also empowers the court to authorize the applicant to inspect all documents in the possession of the respondent, without limiting such inspection to documents related to the infringing activity of the respondent. The Anton Piller order does not grant such unrestricted access to the respondent’s records.

It seems appropriate, given the extremely invasive nature of an order which can be made under this provision in a civil action, that in applying the provision, the courts should be guided by the rules of statutory interpretation which prescribe that statutes which detract from or abridge established rights, should be strictly construed against the person who seeks to benefit under it.¹¹

In this regard the question arises to be considered whether it is not appropriate that an applicant for an order under this provision should not be limited to being accompanied to the premises of the defendant by only one policeman as expressly provided by the provision and whether the applicant should not be refused permission to remove any document from the premises of the respondent though he is authorized to inspect them as expressly provided by the provision.

Regardless of the issue raised, the court nevertheless retains the power in the exercise of its inherent jurisdiction to grant an Anton Piller order in respect of a copyright infringement action. Therefore an applicant who elects to ask for the remedy rather than an order under section 22 of the Copyright Act should be entitled to a normal Anton Piller order with all the safeguards erected by the courts to protect the interest of the absent defendant.

As earlier explained, where on the one hand the rights owner finds a product which infringes his intellectual property right on sale in numerous retail outlets and on the other hand he is unable to identify the source from which the retailers obtain their supply, a rights owner will only be able to deal with the infringement problem by instituting an action which will affect all persons who are dealing in the infringing product. To achieve this objective, he will have to obtain the leave of court to sue a few of the persons dealing in the infringing product for themselves and as representatives of all others dealing in the product.

The form of action which results, when a court grants leave to the plaintiff to sue one or more retailer on their own behalf as well as representing all other persons selling the offending product is known as a class action.

The first known class action in an intellectual property right litigation action in Nigeria was the unreported case of The Wellcome Foundation vs. Ope-Oluwa & Co. and 2 others¹².

At the same time as the writ of summon was filed in the action, the plaintiff filed an ex-parte application praying the court for several reliefs including a prayer for leave to sue the defendants on their own behalf and as representing all other persons selling the product which the plaintiff complained of. The plaintiff also prayed for an interim injunction against the defendants and the persons they represent to restrain them from further sale of the product of which the plaintiff complains.

The court granted the orders prayed for ex-parte. Subsequently the defendant filed an application praying the court to strike out the suit on the ground that all the other persons purported to be represented by the defendant are not before the court, and that the court ought not to grant any of the reliefs claimed in the absence of all proper parties to the action.

In a considered ruling delivered on the 14^th of March 1990, Tofowomo J., the presiding judge, held that the action was properly before the court, though members of the represented class are indeed not before the court. He went further, relying on the persuasive authority of the decision of the English Court of Appeal in EMI v. Kudhail¹³ and held that the court had jurisdiction to grant ex-parte orders against a represented class, and that where there was sufficient identity of interest amongst them, an injunction could be granted against them.

Since that decision, the class action has become a well established procedure in the practice of the Federal High court.

The most important criterion to be considered by the court in deciding whether or not to grant leave to a plaintiff to sue the defendant as representative of some others not brought before the court is provided in the rules of court.

Order 12 rule 8 of the Federal High Court (Civil Procedure) Rules 2000 provides that:

Where more persons than one have the same interest in one suit, one or more of them may, with the approval of the court, be authorized by the other persons interested to sue or to defend the suit for the benefit of or on behalf of all other parties so interested."

The Supreme court in Nta & Others v Anigbo¹⁴. in interpreting Order 4 rule 3 of the former Rules of the High Court of eastern Nigeria, a virtually identical provision, decided that the provision does not require the named defendant to obtain the consent of the persons he is being made to represent. The court held that it is for the court to decide whether it is appropriate that the named defendant should be sued as a representative of the persons he is being made to represent.

Order 14 rule 14 of the High Court of Lagos State (Civil Procedure) Rules dealing with suits in a representative capacity also provides:

"Where there are numerous persons having the same interest in one cause or matter one or more of such persons may with the leave of the Court or a Judge sue or be sued or may be authorized by the Court of Judge in Chambers to defend any such cause or matter on behalf or for the benefit of all persons so interested"

Whether leave is sought under Order 12 rule 8 of the Federal High Court rules, or Order14 rule 14 Lagos State High Court Rules the key phrase in both provisions is that all persons in the class and their representatives must have the same interest in the suit for a representative action to be possible. If they do not have the same interest, they ought not to be constituted as members of a single class.

In Roche –v- Sherrington¹⁵ it was held that, where there might be different defences open to persons sought to be jointly sued as members a class, a representative action is not proper and the action should be dismissed.

The Supreme Court of Nigeria in its decision in Idise –v- Williams International Limited¹⁶ held that in order for an action to lie in a representative capacity, there must be (1) common interest (2) a common grievance and (3) relief claimed must be beneficial to all. This principle was enunciated with regard to persons seeking to sue in a representative capacity, and not to defendants being sought to be sued as representatives of their class. However, the principle can be applied mutatis mutandis to postulate that where defendants are being sought to be sued as representatives of a class: (1) There must be common interest between them and all other members of the class (2) There must be a common defence and (3) The relief claimed by the plaintiff must affect all in the same way.

The English Court of appeal in E.M.I. v. Kudhail¹⁷, decided to grant an injunction against a represented class because they found that there was sufficient common interest between the members of the class. Therefore, if there was no common interest, the injunction would not have been granted.

Therefore, where a plaintiff seeks to group together in a class persons who may be dealing in different products, but only share the common factor that their different products infringe the same intellectual property right of the plaintiff, the court ought not to grant leave to sue those persons together in one group.

It therefore should be said in conclusion, that the definition of the class sought to be sued by a plaintiff ought to be closely scrutinized by the court before leave could be granted to sue the class. If the definition is so wide as to admit persons who are dealing in different products, it ought not to be allowed.

The Nigerian jurisprudence on injunctive remedies is well settled.

The Supreme court in Saraki v. Kotoye¹⁸ provided very clear guidelines based upon which an injunction would be granted. Subsequent decisions of the Supreme Court have only served to clarify and expatiate on those guidelines:

The basis principles could simply be stated as follows:

An ex-parte injunction will be granted:

• when there is real urgency
• When the court considers that on a prima facie view, an otherwise irreparable damage may be done to the plaintiff before an application on notice for interlocutory injunction can be heard.
• Where there is a real impossibility of bringing the application on notice and serving the other party
• For an interlocutory injunction to be granted the applicant must satisfy the court that:
• There is a real possibility, though not a probability of success at the trial. In other words, that there is serious question to be tried in the matter before the court.
• Damages cannot be an adequate compensation for the injury he would suffer by the time the suit is determined, if the interlocutory injunction were to be denied.
• Where the respondent also alleges that he will suffer an injury which cannot be adequately compensated by an award of damages, if the injunction were to be granted, then the applicant must go further to show that the balance of convenience is on his side.
• The applicant must give an undertaking to pay damages as may be assessed by the court, if at the end of the day it turns out that the injunction ought not to have been granted.
• The courts have largely been guided by these principles.
• In recent time though courts have been warned repeatedly, not to be too eager to grant ex-parte injunctions, as the procedure appears to have been abused. It should be stated however that whilst courts ought to be more discriminatory in granting ex-parte injunctions, it is submitted with respect that such adjuration should not hinder the courts in granting the orders where the interest of justice demands it. It is submitted with respect, that in so far as all the conditions set down by the Supreme Court for granting an injunction ex-parte are met, an applicant who has made out a valid claim for an ex-parte injunction should not be denied.

©Obatosin Ogunkeye

23^rd January 2002.