Private criminal prosecutions
Who can bring a private prosecution?
For clear-cut cases of counterfeiting and illegal parallel importation, IP owners have the right (under section 6(1) of the Prosecution of Offences Act 1985) to bring a private criminal prosecution for an IP offence.
Pros and cons of private criminal prosecutions
The advantages of a private criminal prosecution are:
- It is generally cheaper and quicker than a civil action for IP infringement. In particular, costs are usually recoverable from central funds, but the court will only reimburse a reasonable amount, and the court has a discretion to decline to make an order for reimbursement if the prosecution was started or continued unreasonably, or if there is some other good reason. For the likely costs of a private criminal prosecution, see the costs and budgeting section in tab 10 of this guide.
- The defendant is sanctioned for wrongdoing.
- A criminal conviction can be more dissuasive and send a powerful message to the market.
The disadvantages of a private criminal prosecution are:
- The burden of proof is higher (being beyond a reasonable doubt as opposed to on the balance of probabilities).
- There is no disclosure.
- It isn’t possible to claim interim relief (such as interim injunctions, search and seizure orders and freezing injunctions). This can be mitigated by bringing a civil action for such relief in parallel, although the full civil action is usually stayed pending the outcome of the criminal action so that the prosecutor is not able to benefit from the broad disclosure available in civil actions. A parallel action for a Norwich Pharmacal Order (see tab 8 of this guide) might also be required.
- It isn’t possible to claim damages, although an action to trace and recover the proceeds of crime can be brought under the Proceeds of Crime Act 2002 – see tab 9 of this guide.
- It isn’t possible to withdraw from a private criminal prosecution unless it is in the public interest to do so.
- Rights holders tend to have less control over the case.
For our top tips on bringing private criminal prosecutions, see the tips for civil and criminal proceedings section in tab 8 of this guide.
DPP's powers
The Director of Public Prosecutions (DPP) has the power to take over – or discontinue – any private criminal prosecution under sections 6(2) and 23 (respectively) of the Prosecution of Offences Act 1985.
The person bringing the private criminal prosecution is not under an obligation to inform the CPS that a prosecution has been commenced. However, the CPS might find out from various sources including one of the parties, the judge or the press, which could trigger a decision on whether the DPP should take over or discontinue the action. For more on the criteria the DPP will apply, see Private Prosecutions | The Crown Prosecution Service.