WORLD TRADE
ORGANIZATIONIP/N/6/DMA/1
30 May 2001
(01-2702)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
CHECKLIST OF ISSUES ON ENFORCEMENT1
Responses from Dominica
Introductory Remarks
Dominica's legal system and jurisprudence is based on the Common Law of England.  Its
laws are found in the plethora of Statutes and the Common Law.
Dominica is also one of the nine Eastern Caribbean countries/jurisdictions of the Eastern
Caribbean Supreme Court.
Civil and Administrative Procedures and Remedies
(a) Civil judicial procedures and remedies
1. Specify the courts which have jurisdiction over IPR infringement cases.
Jurisdiction over intellectual property rights is exercisable by The Eastern Caribbean Supreme
Court, which is a superior Court of Record and comprises two divisions:  the High Court, presided
over by a single Judge and the Court of Appeal.  Final appeals are to the Judicial Committee of thePrivy Council in England.
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?
Which persons have standing to assert IPRs?
In relation to trademarks/service marks, utility models, patents, industrial designs, plant
varieties and layout-designs of integrated circuits, the registered owner of the rights or the registered
licensee may assert that right.
 In the case of geographical indications any interested person or group of interested persons or
any group of consumers or any competent authority may institute proceedings in the High Court to
prevent any unlawful act in respect of geographical indications.
Competent authority is not defined in the Geographical Indications Act, but this would
normally be an institution which has standing in the particular matter, i.e. suffered loss or likely to
suffer loss or is otherwise affected by an infringe ment.  The institution would also need to have the
capacity to sue and be sued.
                                                     
1 Document IP/C/5.IP/N/6/DMA/1
Page 2
As to Copyright, it will be anyone claiming as owner of the copyright as a result of creation or
assignment or other transmission rights, or an exclusive licensee. (See the draft Copyright Bill.)
How may they be represented?
An individual may be represented in person or by an Attorney-at-Law of his choice.
Are there requirements for mandatory personal appearances before the court by the right
holder?
There are no mandatory requirements for personal appearances before the court.  The Civil
Procedure Rules allows the Court to hear a matter in the absence of one party.  The rules also makeprovisions for an application for depositions to be taken before trial.  This, of course, removes the
opportunity for examination and/or cross-examination of a person during trial.
It is to be noted that the Court has power to strike out a matter where neither party appears.
A party can act by a person to whom he has granted a legal power of attorney to do so.
3. What authority do the judicial authorities h ave to order, at the request of an opposing
party, a party to a proceeding to produc e evidence that lies within its control?
The Civil Procedure Rules give the Court authority to require a party to disclose and inspect
documentary evidence before trial, and to produce such evidence at the trial.  Generally in requiring
production of evidence, the Court must take into account the legitimate interest of the defendant in not
disclosing his manufacturing and business secrets.
The Court may also on application grant an interim injunction for preservation of evidence if
there is a legitimate fear of such evidence being destroyed.
The Eastern Caribbean Supreme Court Act (Dom inica) gives the Court of Appeal the power
to order the production of evidence if this is necessary for determining a case before it.
4. What means exist to identify and protect confidential information brought forward as
evidence?
There are no statutory provisions respecting the identity and protection of confidential
information.  The Court may in its discretion treat as confidential any information produced as
evidence.   An application may be made to the court for such information to be treated as confidential.
The Court has discretion whether or not to grant the application.
The general practice is that trials are held in open Court, i.e. open to the public.  Interlocutory
proceedings, including case management conferences and pre-trial reviews are however held "in
chambers", i.e. closed to the public.  The court may in its discretion hear any matter in camera , i.e.
closed to the public if it considers it expedient to do so.IP/N/6/DMA/1
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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.
The following remedies may be ordered by the judicial authorities:
- damages;
- injunctions;
- seizure, forfeiture and destruction or disposal of infringing goods and material and
implements used for their production;
- other remedies provided for in law, e.g. Declaration including Declarative Injunction.
Injunctions
 The Intellectual Property (IP) Statutes provide for the granting of injunctive relief for
infringement of an IP right.  The Court will grant an interim injunction only if the matter is urgent or
it is necessary to do so in the interest of justice and damages would not be an adequate remedy in thecircumstances.  The applicant for an interim injunction is required to give an undertaking to
compensate the respondent is it is later determined that the granting of the injunction was not justified.
Damages
Damages generally include the recovery of commercial losses occasioned by the
infringement.  In determining damages, the Court must take into account reasonable royalty which
may have been payable by a licensee.  Further damages, such as aggravated damages may be awarded
if the circumstances in which the infringement was committed was so scandalous as to merit such
award.  An order for damages is normally accompanie d by an order for payment of legal cost to the
successful party who is generally entitled to such costs.
Seizure, forfeiture and destruction
Under the Intellectual Property (IP) Statutes (including a draft Copyright Bill) the Court has
power to make an order on the application of the intellectual property right holder for the seizure,
forfeiture or destruction of infringing products or articles.
Any other remedies
The Intellectual Property Statutes also allow a right holder, as an alternative to seeking an
award of damages, to seek an account of profits.  The Court in such circumstances is required to makean assessment of the profits gained by infringer consequent on the infringement and to pay this over to
the right holder.IP/N/6/DMA/1
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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 of services found to be infringing and of their
channels of distribution?
Although this is not expressly provided by Statute the Court can under its inherent jurisdiction
order a person who has infringed an intellectual pr operty right to provide the court with information
identifying any person who has supplied to him infr inging articles, or the means by which these
articles have been made, provided that the supplier had the knowledge or reasonable belief that the
particular instrument was used to make infringing copies.
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?
Describe provisions relating to the indemnification of defendants wrongfully enjoined
The Court has the power to award damages or order the payment of compensation in favour
of a party which has been wrongfully enjoined as a party.
To what extent are public authorities and/or officials liable in such a situation and what
"remedial measures" are applicable to them?
Judges of our Court are by common law immune from suit in the event that their decisions are
overturned by the Court of Appeal.
Under the State Proceedings Act, the State is vicariously liable for the act or omission of a
public officer in the exercise of his duties as such.
8. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
Describe provisions governing the length and cost of proceedings
There are no statutory provisions governing the length and cost of proceedings.  The Civil
Procedure Rules stipulate periods within which pre-trial matters or proceedings must take place.  The
Rules do not encourage extensions, and are strict as to agreements between parties for extension of
time and the granting of such extensions by the Court.
Provide any available data on the actual duration of proceedings and their cost
There is no available data on the duration of proceedings and their cost.  The length and cost
of proceedings will depend on their nature and complexity.
(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.
There are no provisions for dealing with infringements administratively.IP/N/6/DMA/1
Page 5
Provisional Measures
(a) Judicial measures
10. Describe the types of provisional measures that judicial authorities may order, and the
legal basis for such authority.
Part 17 of the Civil Procedure Rules, 2000 lists the interim remedies which may be granted by
the Court.  These include:
- interim injunctions;
- interim declarations;
- orders for the detention, custody or inspection of relevant property;
- orders to deliver up goods;
- freezing orders;
- orders to provide information about property or assets subject of a freezing order;
- search orders;
- order for interim payment;
- any other interim order as dictated by the circumstances of the case.
11. In what circumstances may such measures be ordered inaudita altera  parte ?
The High Court, in cases of urgency, will grant an  ex parte  injunction, i.e. inaudita altera
parte .  However, the Court will only do so if it is satisfied that the matter is urgent and not doing so
would defeat the purpose of the application.  An e x parte  injunction order may only be granted for a
maximum period of 28 days.  A returnable date must be fixed on the granting of the order when both
parties will return at inter partes  hearing.  At such hearing both parties are heard and the Court may
either discharge the injunction or order its continuance.
12. Describe the main procedures for the init iation, ordering and maintenance in force of
provisional measures, in particular relevant time-limits and safeguards to protect the
legitimate interests of the defendant.
Before application is made for provisional measures, i.e. interim injunction, a claimant must
commence legal proceedings by filing a Claim Form and Statement of Claim.  An ex parte  injunction
may be granted upon an undertaking by the claimant to issue and serve the Claim Form by a specified
date.
A claim for an interim injunction can be made at any time, including before judgment, if the
matter is urgent or necessary in the interest of justice and after judgment.  An Application for an
interim injunction must be supported by evidence on affidavit .  Where the application is made ex
parte   the reasons for so doing must be given in the affidavit .
An applicant for an interim order must undertake to abide by the order of the Court as to
damages caused by the granting of the injunction or extension of it.  A defendant may apply for
interim order but he may not do so before filing an acknowledgement of service to the claim.
An interim order must be served by the claimant on the defendant.  The order on an ex parte
application must be served by the claimant together with the application for the interim order, theaffidavit  in support and notice of the date and time for the inter partes  hearing.IP/N/6/DMA/1
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13. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
Describe provisions governing the length and cost of proceedings
See the answer to question 8 above.
Provide any available data on the actual duration of proceedings and their cost
See the answer to question 8 above.(b) Administrative measures
14. Reply to the above questions in relation to any administrative provisional measures.
There are no provisions in the laws of Dominica where provisional relief can be given by an
administrative body.
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 circulat ion, 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 a nd to goods destined for exportation?
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)
Part IX, section 99-102 of the Draft Copyright Bill, deals with border protection measures and
provides for the person who owns the copyright to write a notice to the Comptroller of Customs
requesting him to detain any such pirated copy as may come into the control or custody of theCustoms.  There are no similar provisions in the legislation dealing with trade marks or any other
intellectual property right legislation.
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?
In the Draft Copyright Bill there is no provision for the exclusion of any imports from the
procedures of Part IX.  The existing intellectual property legislation does not make any provision forprocedures with respect to the import of goods put on the market in another country.IP/N/6/DMA/1
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16. Provide a description of the main elements of the procedures relating to the suspension
of the release of goods by customs authoritie s, in particular the competent authorities
(Article 51), the requirements for an application (Article 52) and various requirements
related to the duration of suspension (Artic le 55).  How have Articles 53 (security or
equivalent assurance), 56 (indemnification of the importer and of the owner of thegoods) and 57 (right of inspection and information) been implemented?
Under section 99 of the Draft Copyright Bill th e competent authority to suspend the release of
goods is the Comptroller of Customs.
To initiate the seizure of copies or counterfeited goods the copyright owner or exclusive
licensee must provide written notice of objection to importation to the Comptroller of Customstogether with any prescribed documents.  A notice remains in force for a specified period not
exceeding five years from the day of which the notice is given.
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 ofdecisions by the competent authorities for the suspension of the release of goods into free
circulation?
The draft Copyright Bill is yet to be laid before Parliament and as yet does not have any
regulations.
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?
Are competent authorities required to act upon their own initiative and, if so, in what
circumstances?
There is no provision requiring ex officio  action by Customs officials.  All actions must be
initiated by the copyright owner or exclusive licen see or by the owner (or authorised user) of the
industrial property right.  Under the draft Copyright Bill the Comptroller may only seize copies if the
copyright owner or licensee gives notice of objection to the importation of the copies.
Are there any special provisions applicable to ex officio  action?
There are no such provisions.
19. Describe the remedies that the competent authorities have the authority to order and
any criteria regulating their use.
The Customs authority is not empowered to order remedies for infringement.  They can seize
infringing copies of counterfeit goods and dispose of those copies or goods if they are forfeited by the
importer.  All remedies are decided by the courts.
Criminal Procedures
20. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.
The Magistrate’s Court with respect to summary offences, the High Court with respect to
indictable offences and, on appeal, the Court of Appeal have jurisdiction over criminal acts of
infringement.  Final appeal lies to the Judicial Committee of the Privy Council.IP/N/6/DMA/1
Page 8
21. In respect of which infringements of which intellectual property rights are criminal
procedures and penalties available?
The following sections of the legislation listed below detail the infringements for which
criminal offences are specified and the penalties associated with each.
Protection of Layout-Designs (Topographies) of Integrated Circuits:  Section 25.
Trade Marks (Marks, Collective Marks and Trade Names Act):  Sections 17(3), 18, 28
and 29.
Patents:  Sections 33, 36, 40 and 63.
Geographical Indications:  Sections 13 and 23.
Industrial Designs:  Sections 24(5) and 25.
Protection of Plant Varieties:  Section 45.
22. Which public authorities are responsible fo r initiating criminal proceedings? Are they
required to do this on their own initiative and/or in response to complaints?
The Commonwealth of Dominica Police Force is responsible for initiating criminal
proceedings in matters and also in the case of intellectual property.  The action to prosecute for an
offence is one for the Director of Public Prosecutions.  In the vast majority of cases the action taken
by the police results from complaints being brought.  However, an individual is not precluded from
bringing a private prosecution for these offences.
23. Do private persons have standing to initiate criminal proceedings and, if so, who?
Persons do have the right to initiate to bring a prosecution.  A fiat from the Director of Public
Prosecutions is necessary in such a case.
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.
Copyright
Sections 51-62 of the draft Copyright Bill establish offences for acts stated therein and
provide the penalties that would be imposed.
Trademarks
Section 29 of the Marks, Collective Marks and Trade Names Act establishes offences for acts
stated in sections 17(3), 18 and 28, and provides the penalties that may be imposed.IP/N/6/DMA/1
Page 9
Patents
Section 63 of the Patents Act establishes offences for acts stated in section 40 and provides
the penalties that may be imposed.
Industrial designs
Sections 24(5) and 25 of the Industrial Designs Act establish offences for acts stated therein
and provides the penalties that may be imposed.
Layout-designs
Section 25 of the Protection of Layout-Designs (Topographies) of Integrated Circuits Act
establishes offences for acts therein and provides the penalties that may be imposed.
Geographical indications
Section 23 of the Geographical Indications Act establishes offences for acts stated in
section 13 and provides the penalties that may be imposed.
Plant varieties
Section 45 of the Protection of Plant Varieties Act establishes offences for acts stated therein
and provides the penalties that may be imposed.
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.
There are no provisions governing length and cost of proceedings.
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