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Published online by Cambridge University Press: 17 January 2008
“Until comparatively recently, intellectual property rights were viewed as entirely national in scope and effect … the courts here could not and would not try issues of validity and infringement of foreign intellectual property rights.” The recent developments that Laddie J was referring to have led to the High Court exercising a much expanded jurisdiction in cases of intellectual property infringements and international litigation. These developments mean that there is yet another reason why international litigants could be attracted to the English courts. However, they have also led to new battles for territory fought out across the North Sea.
1. Fan Dodge Animal Health Ltd and Others v. Akzo Nobel NV and Another (unrep., 16 Oct. 1997), per Laddie J at p.1.Google Scholar
2. In April 1997 it was correctly stated that the “orthodox view is that a court will not give relief for infringement of foreign intellectual property rights”: Austin, , “The Infringement of Foreign Intellectual Property Rights” (1997) 113 L.Q.R. 321, 321.Google Scholar
3. See e.g. Dutson, , “Actions for Infringement of a Foreign Intellectual Property Right in an English Court” (1997) 46 I.C.L.Q. 918Google Scholar, Fentiman, , “Intellectual Property and the Brussels Convention” [1997] C.L.J. 503Google Scholar, Tugendhat, , “Media Law and the Brussels Convention” (1997) 113 L.Q.R. 360Google Scholar and Briggs, , “Two Undesirable Side-Effects of the Brussels Convention” (1997) 113 L.Q.R. 364.Google Scholar
4. [1997] Ch. 293.Google Scholar
5. Art.2 in particular. Art.2 of the Brussels Convention 1968, in Sch. 1 to the Civil Jurisdiction and Judgments Act 1982, provides: “persons domiciled m a contracting state shall be sued in the courts of that state”.
6. [1997] 3 All E.R. 45.Google Scholar
7. Art.16 provides: “The following courts shall have exclusive jurisdiction, regardless of domicile:… (4) in proceedings concerned with the registration or validity of patents, trade marks, designs or other similar rights required to be deposited or registered, the courts of the contracting state hi which the deposit or registration has been applied for, has taken place.” Art.19 provides: “Where a court of a contracting slate is seized of a claim which is principally concerned with a matter over which the courts of another contracting state have exclusive jurisdiction by virtue of article 16, it shall declare of its own motion that it has no jurisdiction.”
8. Coin Controls, supra n.6.
9. Being English and foreign IP rights that are identical or at least not materially different.
10. Art.6(1) of the Convention provides that a person, who is one of a number of defendants, may be sued in the courts for the place where any one of them is domiciled.
11. See e.g. Brinkhof, , “The Infringement of Foreign Patents” [1994] 8 E.I.P.R. 360Google Scholar and “The Dutch Kort Geding Procedure in Patent Cases” [1996] 9 E.I.P.R. 499.Google Scholar
12. Palmaz & Ors v. Boston Scientific BV & Ors [1998] F.S.R. 199, 211 (District Court of The Hague—Sixth Section).Google Scholar
13. Idem, p.214.
14. See Fort Dodge, supra n.1, at pp.1–2, 4 and 5 (per Laddie J).Google Scholar
15. See e.g. Brinkhof, both op. cit. supra n.11.
16. Cf. Laddie, J in Fort Dodge, supra n.1, at p.2.Google Scholar
17. See Gazette, 28 Aug. 1997.
18. Supra n.1.
19. Idem. pp.6–10.
20. These decisions are discussed in detail infra Section I.
21. Unrep.,27 Oct. 1997, CA (Lord Woolf MR, Aldous and Chadwick LJJ). A materially identical case (Boston Scientific Ltd v. Cordis Corporation (unrep., 18 Nov. 1997, CA: Lord Woolf MR. Aldous and Waller LJJ)), reached the Court of Appeal from Jacob J at first instance shortly after Fort Dodge. In its reference to the ECJ the Court ordered that the two cases be conjoined. Boston Scientific contains nothing that adds to Fort Dodge and accordingly is not considered in this article.
22. Only 13 days later the appeal had been heard and the Court of Appeal had published its reasons.
23. Fort Dodge, supra n.21, at p.1.Google Scholar
24. Cf. Fentiman, and Briggs, , both op. cit. supra n.3, and see for a discussion of the distinction between the two forms of jurisdiction Dutson, “The Conflict of Laws and Statutes” (1997) 60 M.L.R. 668, 669–671. The present author does not intend to reventilate the discussion on this contention that was first considered in Pearce and was discussed in the articles noted supra n.3.Google Scholar
25. See supra n.3 and Dutson, , “The Internet, the Conflict of Laws, International Litigation and Intellectual Property” [1997] J.B.L. 495, 506–509.Google Scholar
26. Art.57 of the Brussels Convention provides; “This Convention shall not affect any conventions to which Contracting States are or will be parties and which in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments.”
27. Art.64 of the EPC provides: “(1) A European patent shall… confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted by that state… (3) Any infringement of a European patent shall be dealt with by national law.”
28. (1906)3 C.L.R. 479Google Scholar. The petitioners also referred to the US decisions Vanity Fair Mills v. T. Eaton Co. 234 F.2d 633 (1956) and Stein Associates Inc v. Heat Control Inc. 748 F.2d 653 (1984).Google Scholar
29. Boston Scientific, supra n.21.
30. [1992] R.P.C 21, 28 (Leggatt LJ concurring).Google Scholar
31. See points 1 and 2 in the reference to the ECJ Infra Section H.
32. Potter v. Broken Hill Proprietary Company Limited (1906) 3 C.L.R. 479, 494–500, 504–507 and 510–516Google Scholar. The two US decisions referred to by the petitioners go no further than Potter in merely restating the international convention relied upon in Potter. Vanity Fair, supra n.28, at pp.646–647Google Scholar and Stein, supra n.28, at pp. 656–658Google Scholar. In Vanity Fair the plaintiff sought to apply US trade mark law extraterritorially and the court stated that the 1883 Paris Convention did not enable a US court to apply US trade mark law to an act that took place in Canada. It did no more than reinforce the territoriality of a State's IP legislation: at pp.640–641Google Scholar (for a discussion of the territorial nature of registrable IP rights see Dutson, op. cit. supra n.25, at pp.495–497Google Scholar). In Stein the court reached a decision practically identical to that reached in Potter, in a case where the primary issue was the validity of a UK patent a US court could not determine that question. A remark in that case that it was for a British court “applying British law, [to] determine validity and infringement of British patents” (at p.658), must be read in this context.Google Scholar
33. E.g. Western Electric Cpy Inc. v. Milgo Electronic Corp. 450 F.Supp. 835, 838Google Scholar(1978) and Ortman v. Stanray Corp. 163 U.S.P.Q. 331Google Scholar(1969) (DC, ND III.).Google Scholar
34. Cf. London Film Productions v. Intercontinental Communications 580 F.Supp. 47, 49 (1984).Google Scholar
35. The stay of an infringement action in these circumstances is discussed in detail infra Section F.
36. Cf. Palmaz & Ors, supra n.12, at p.215Google Scholar. Contrast the special jurisdiction provisions in the Convention for the European Patent for the Common Market Luxembourg 1975, and see the Schlosser Report (1979) O.J. C59, para.173 (5 Mar.).Google Scholar
37. Cf. Tritton, and Tritton, , “The Brussels Convention and Intellectual Property” (1987) 12 E.I.P.R. 349, 353.Google Scholar
38. Fort Dodge, supra n.21, at p.11.Google Scholar
39. Case C-189/87 [1988] E.C.R. 5565.Google Scholar
40. Fort Dodge, supra n.21, at pp.11–12. In this passage the Court has effectively disapproved this aspect of Laddie J's judgments in Coin Controls and at first instance. On a purely practical note it must be noted that the Court's view seriously impedes the ability of a plaintiff to consolidate its multinational actions for infringement of a virtually identical IP right, an ability endorsed by Lloyd J in Pearce and the Court of Appeal in the instant case. The interpretation of Art.16(4) that the Court rejected would allow for the efficient and effective resolution of infringement actions in these cases; a plaintiff could avoid the expensive multiplication of proceedings that will follow in any case in which its IP rights have been infringed transnationally. The rejected interpretation would also avoid the possibility of inconsistent judgments being delivered with respect to virtually identical IP rights.Google Scholar
41. Fort Dodge, idem, p.12. In Boston Scientific Ltd. v. Palmaz and Others (unreported, 23 April 1998, The Hague Court of Appeals) the Court overruled the decision of the District Court of the Hague in Palmaz and Ors. v. Boston Scientific B. V. and Ors. [1988] FSR 199 with respect to the interpretation of Article 6(1) of the Convention. The Court of Appeals stated that in cases in which the alleged infringes are not part of the same group of companies claims against different defendants for the infringement of different jurisdictions' IP rights cannot be joined in the one action utilising Article 6(1). The Court adopted the same rationale as that employed by the English Court of Appeal in Fort Dodge, in these cases there will never be irreconcilable judgments because the actions relate to different national rights. As discussed further below, the present author disputes the basis for this finding. However, in cases in which the alleged infringers were part of the same group of companies, the Court was prepared to allow Article 6(1) to be used to consolidate actions with respect to identical IP rights. This qualification to Article 6(1) is entirely arbitrary finding no basis in the Conven- tion or ECJ jurisprudence. It would allow infringers to avoid the consolidating power in Article 6(1) merely by adopting a more complex or convoluted corporate or marketing structure.Google Scholar
42. Cf. Sarrio SA v. Kuwait Investment Authority (unrep., 13 11. 1997, HL), a decision dealing with this phrase in Art.22.Google Scholar
43. Supra n.39, at pp.5574–5575.Google Scholar
44. See, in respect of Art.6(1) Kalfelis, idem, and, in respect of Art.22, Case C-406/92 The Tatry [1994] E.C.R. 1–5439.Google Scholar
45. Cf. Sarrio, supra n.42. Contrast the position under Art.21 which provides for cases where the cause of action is identical: LA Gear v. Gerald Whelan & Sons [1991] F.S.R. 670. Note that when discussing Art.22 in LA Gear Mummery J was labouring under the misapprehension that an English court could not determine an action for infringement of a foreign IP right.Google Scholar
46. Cf. Abko Musk &. Records Inc.. v. Music Collection International [1995] E.M.L.R. 449 (CA).Google Scholar
47. Fort Dodge, supra n.21, at pp. 13–15.Google Scholar
48. Idem, pp.14–15.
49. The separation of the two actions is not novel within the Convention States. In Germany, e.g., concurrent infringement and validity actions will not be heard in the one court. The action for infringement will be treated as an action in tort and heard in a Land court while the validity action will be heard before a federal court.
50. Cf. Dutson, , op. cit. supra n.3, at p.923 and see now Palmaz & Ors, supra n.12. The High Court of Australia in Potter, supra n.32, did not ha ve this option argued before it and failed to consider it, and Austin, op. cit. supra n.2 failed to apprehend the existence of this possibility.Google Scholar
51. The trial judge will have to rely on the alleged infringer for this information. If the invalidity proceedings are not subsequently commenced or if the right is ruled valid, the judge can vacate the stay and reinvigorate the infringement proceedings.
52. E.g. where the alleged infringer raises a “Gillette” defence: see Gillette v. Anglo-American Trading (1913) 30 R.P.C 465, 480 (per Lord Moulton).Google Scholar
53. This option was favoured by Wadlow, “Intellectual Property and the Judgments Convention” (1985) 7 E.L.Rev. 305, 310–315Google Scholar and Kaye, , Civil Jurisdiction and Enforcement of Foreign Judgments (1987), p. 1023.Google Scholar
54. Kaye, idem, p.1023, n.331. Cf. the Jenard Report (1979) O.J. C59/37 (5 Mar.).Google Scholar
55. Collins, , The Civil Jurisdiction and Judgments Act 1982 (1983), p.83Google Scholar. See also Jooris, “Infringement of Foreign Copyright and the Jurisdiction of the English Courts” [1996] 3 E.I.P.R. 127, 139.Google Scholar
56. Blessing, , “Arbitrability of Intellectual Property Disputes” (1996) 12 Arbitration International 191, 201–203Google Scholar. Contrast Redfern and Hunter, International Commercial Arbitration (1991), p. 138.Google Scholar
57. This solution is consistent with the solution provided by the ECJ in Case C-163/95 Von Horn v. Cinnamond [1998] Q.B. 214, 241, in a case where one Convention State court's jurisdiction was dependent upon a determination yet to be reached in another Convention State's courts.Google Scholar
58. O'Malley and Layton appear to accept that h will not be every infringement case in which the issue of invalidity is raised that must be sent to the court of the place where the right is registered: European Civil Practice (1989), p.537.Google Scholar
59. See Holyoak, and Torremans, , Intellectual Property Law (1995), p.132Google Scholar, there discussing the parallel litigation in Improver Corp. v. Remington Consumer Products Ltd [1990] F.S.R. 181.Google Scholar
60. See, in particular, Saunders v. van der Putte [1997] E.C.R. 2383, 2391Google Scholar, and, more generally. Bier BV v. Mines de Potasse d'Alsace SA [1976] E.C.R. 1735, 1746.Google Scholar
61. Cf. The Siskina [1979] A.C. 210, 259–260.Google Scholar
62. Including the exorbitant bases of jurisdiction some of which are referred to in Art.3.
63. See O'Malley and Layton, op. cit. supra n.58, at p.649Google Scholar. Contrast Kaye, op. cit. supra n.53, at p.1146.Google Scholar
64. Cf. de Cavel v. de Cavel (No.2) [1980] E.C.R. 731, 740Google Scholar, and Denilauler v. Couchet Frères [1980] E.C.R. 1553, 1570–1571.Google Scholar
65. Collins, , op. cit. supra n.55, at p.99.Google Scholar
66. Fort Dodge, supran n.21, at p.16.Google Scholar
67. Kaye, , op. cit. supra n.53, at p.1189Google Scholar, although he provides no curial support for his view. Art.24 being subject to Arts.16(4) and 19 seems to be consistent with the practical application of Art.24. If Art.24 is subject to Art.16(4) and resort is had to it to grant provisional relief and no main or substantive proceedings have yet been commenced one problem seems to exist. In such a case how will the court before which merely provisional relief is sought know whether or not the validity of the underlying IP right will be attacked subsequently? Many cases in which provisional relief is sought can be commenced and an order obtained in a matter of days or even hours. In these circumstances, particularly in ex parte applications, there is a danger that Art.24 provisional relief will be granted despite the fact that upon a more detailed consideration of the case the defendant will attack the right's validity. However, the interpretation that has been placed upon Art.24 by the ECJ has somewhat ameliorated this concern. An order that has been made ex parte cannot be enforced in another Convention State unless the defendant has been given sufficient notice of the order to allow him to prepare a defence: Denilauler v. Couchet Frères [1980] E.C.R. 1553. Accordingly, the celerity with which provisional orders are obtained should not defeat any Art.16(4) limitation thereto: the defendant to any provisional order made under Art.24 will be given an opportunity to attack the IP right's validity before it can be enforced outside the granting court's jurisdiction.Google Scholar
68. J. A. Motte v. Tecno SpA Riv.dir.int.priv.proc. 1981, p.913. Digest D 1–16.4–B3.Google Scholar
69. Fort Dodge, supra n.21, at p.16.Google Scholar
70. As approved by the Court of Appeal.
71. Cf. Fort Dodge, supra n.21, at p.16.Google Scholar
72. This possibility is discussed further infra.
73. Fort Dodge, supra n.11, at p.17.Google Scholar
74. Ibid.
75. Ibid.
76. C.m.b.H.R. v. A.G.B. (1980) 8 E.L.D. 81 (Belgian)Google Scholar. Cf. The Lisbon [1980] 2 Lloyd's Rep. 546 (CA).Google Scholar
77. Cf.Coin Controls, supra n.6, at p.62 (per Laddie J)Google Scholar, Collins, (1981) 1 Y.E.L. 249, 258Google Scholar, O'Malley and Layton, op. cit. supra n.58, at p.171Google Scholar, and Jooris, , op. cit. supra n.55, at p.137.Google Scholar
78. Lafute v. Soc. Les Transitaires réunis et Ortoli Paris Court Of Appeal, 1965 Clunet 901.Google Scholar
79. Cf. Palmaz & Ors., supra n.12, at p.210.Google Scholar
80. See Fort Dodge, supra n.1, at pp.7–8 (per Laddie J).Google Scholar
81. Thereby exduding Art.24.
82. Jenard Report, supra n.54, at p.14.Google Scholar
83. [1987] 1 A.C. 871 (PC).Google Scholar
84. Fort Dodge, supra n.21, at p.19.Google Scholar
85. Idem, pp.19–20.
86. This reference was made for both the Fort Dodge and Boston Scientific appeals.
87. See Civil Jurisdiction and Judgments Act 1982, s.3(1) and Sch.2.
88. See Farrell[1997] E.CR. 1–1683 (ECJ)Google Scholar, H. P. Bulmer Ltd v.J. BolIinger SA [1974] 2 W.L.R. 202Google Scholar (CA) (per Lord Denning MR) and R. v. International Stock Exchange, ex p. Else [1993] Q.B. 534 (per Lord Bingnam MR). However, as discussed in detail infra, the ECJ has other means available to it to refuse to make a ruling.Google Scholar
89. Ibid.
90. [1995] Lloyd's Rep. 87 (CA).Google Scholar
91. [1994] 2 All E.R. 540.Google Scholar
92. The Continental Bank decision was cogently criticised in Bell (1994) 110 L.Q.R. 204.Google Scholar
93. See, supra n.90, esp. at pp.94, 95 and 96.Google Scholar
94. Case C-351/89 [1992] 1 Q.B. 434.Google Scholar
95. Idem, p.459.
96. Cf. idem, pp.458–459.
97. E.g. Arts.28(1) and 34 provide that a judgment shall not be recognised or enforced if it conflicts with the provisions of, inter alia. Art 16(4): cf. Von Horn, supra n.57, at p.241.Google Scholar
98. This assumes that the Dutch appellate courts will agree to make an Art.177 reference to the ECJ. This is probably a safe assumption in the case of the Netherlands.
99. Discussed supra.
100. Case 104/79 Pasquale Foglia v. Marietta Novella (No.1) [1980] E.C.R. 745Google Scholar and Case 244/80 Pasquale Foglia v. Marietta Novella (No.2) [1981] E.C.R. 3045.Google Scholar
101. Fort Dodge, supra n.21, at p.19.Google Scholar
102. Cf. Palmaz & Ors, supra n.12, at p.209.Google Scholar
103. See Fort Dodge, supra n.1, at p.5 (per Laddie J).Google Scholar
104. Idem, p.4.
105. Cf. Coin Controls, supra n.6, at p.62 (per Laddie J).Google Scholar
106. With respect to non-registraWe IP rights see Mecklermedia Corp. v. D.C. Congress GmbH [1998] Ch. 40, 52, 55 (per Jacobs J).Google Scholar
107. Note that, as stated above, the Court of Appeal appear to believe that Art.6(1) does not allow for the consolidation of actions in these cases.
108. Art.5(3) extends to infringement actions: Pearce, supra n.4, at p.303.Google Scholar
109. See Dutson, , op. cit. supra n.25, at pp.495–497.Google Scholar
110. Contrast the defamation action at issue in Case C-68/93 Shevill v. Presse Alliance SA [1995] 2 A.C 18 (ECJ) and the passing-off action in Mecklermedia, supra n.106.Google Scholar
111. Jacobs J in Mecklermedia, idem, pp.52 and 55 appears to have failed to appreciate the importance of this distinction between registrable and non-registrable IP rights.
112. Supra n.110.
113. Cf. Mecklermedia, supra n.106, at pp.52 and 55 (per Jacobs J).Google Scholar
114. Note that, as stated above, the English courts believe that Art.16(4) will serve to restrict proceedings to the place where the right was registered in such a case.
115. Note that, as stated above, the Court of Appeal appears to hold the contrary view.
116. Pearce, supra n.4, at p.307Google Scholar. Coin Controls, supra n.6, at p.62Google Scholar, and Plastus Kreativ AB v. Minnesota Mining [1995] R.P.C 438, 447, respectively.Google Scholar
117. Cf. Austin, , op. cit. supra n.2, at pp.327 and 333.Google Scholar
118. Which includes claims for infringement of IP rights.
119. Dutson, , op. cit. supra n.3, at p.924.Google Scholar
120. Coin Controls, supra n.6, at p.62 (per Laddie J).Google Scholar