Encyclopedia of Private International Law
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Encyclopedia of Private International Law

Edited by Jürgen Basedow, Giesela Rühl, Franco Ferrari and Pedro de Miguel Asensio

The role and character of Private International Law has changed tremendously over the past decades. With the steady increase of global and regional inter-connectedness the practical significance of the discipline has grown. Equally, so has the number of legislative activities on the national, international and, most importantly, the European level. With a world-class editor team, 500 content items and authorship from almost 200 of the world’s foremost scholars, the Encyclopedia of Private International Law is the definitive reference work in the field. 57 different countries are represented by authors who shed light on the current state of Private International Law around the globe, providing unique insights into the discipline and how it is affected by globalization and increased regional integration. The Encyclopedia consists of three inter-linked pillars, enhanced by sophisticated search and cross-linking functionality. The first pillar consists of A-Z coverage of the scope and substance of Private International Law in the form of 247 entries. The second pillar comprises detailed overviews of the Private International Law regimes of 80 countries. The third pillar presents valuable, and often unique, English language translations of the national codifications and Private International Law provisions of those countries. This invaluable combination represents a powerful research tool and an indispensable reference resource.
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Chapter U.5: Unitary intellectual property rights and jurisdiction

Christian Heinze

I. Concept

For the concepts and characteristics of unitary rights as well as the respective choice-of-law provisions, see →Unitary intellectual property rights and private international law. The following entry presents the jurisdictional rules for EU unitary intellectual property rights.

II. p. 1792Unitary rights and jurisdiction

1. Community trade mark, Community design, Community plant variety right

The Community Trade Mark Regulation (Council Regulation (EC) No 207/2009 of 26 February on the Community trade mark, [2009] OJ L 78/1) and the Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3/1) concentrate jurisdiction in respect of infringement and validity of the respective unitary rights (art 96 Community Trade Mark Regulation; art 82 Community Design Regulation) in a limited number of national courts which the Member States have designated as ‘Community trade mark (design) courts’ (art 95 Community Trade Mark Regulation; art 81 Community Design Regulation). For the jurisdiction of these courts, the Community Trade Mark Regulation and the Community Design Regulation establish rules which as leges speciales (ECJ Case C-360/12 Coty Germany GmbH v First Note Perfumes NV, ECLI:EU:2014:1318, para 27) largely pre-empt application of the general regime of the Brussels I Regulation (recast) (Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, [2012] OJ L 351/1; →Brussels I (Convention and Regulation)) (art 94(2) Community Trade Mark Regulation; art 79(2) Community Design Regulation). Moreover, the jurisdictional rules of the Community rights regulations, unlike the Brussels rules, also apply to third-state domiciled defendants, as the reference to national law in art 6 Brussels I Regulation (recast) is excluded (art 94(2)(a) Community Trade Mark Regulation; art 79(2)(a) Community Design Regulation). For issues other than infringement and validity of the Community unitary rights, the Brussels I Regulation (recast) remains largely unaffected (see arts 106–7, 94(1) Community Trade Mark Regulation; arts 93–4, 79(1) Community Design Regulation and art 80 Brussels I Regulation (recast); for enforcement and insolvency see also arts 20(2), 21 Community Trade Mark Regulation and arts 30(2); 31 Community Design Regulation).

In their structure, the jurisdictional rules of the Community unitary rights regulations resemble the Brussels I regime, but with certain significant differences. General jurisdiction, for example, is not only vested in the courts of the defendant’s domicile (defined as in the Brussels I Regulation; art 94(1) Community Trade Mark Regulation; art 79(1) Community Design Regulation; art 102(3) Community Plant Regulation (Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights [1994] OJ L 227/1)), but also in the courts of the defendant’s establishment in the EU (art 97(1) Community Trade Mark Regulation; art 82(1) Community Design Regulation; art 101(2)(a) Community Plant Regulation) and, for defendants not domiciled or established in the EU, in the courts of the plaintiff’s domicile or establishment in the EU (art 97(2) Community Trade Mark Regulation; art 82(2) Community Design Regulation; art 101(2)(b) Community Plant Regulation), or failing that, in the courts of the Member State where the respective Harmonization Office has its seat (art 97(3) Community Trade Mark Regulation; art 82(3) Community Design Regulation: Alicante, Spain; art 101(2)(c) Community Plant Regulation: Angers, France). Such broad general jurisdiction may be explained by the desire to preserve jurisdiction for Community unitary rights disputes in EU courts, even if the alleged infringer and even if both parties are not domiciled or established in the EU.

Another important ground of jurisdiction is jurisdiction based on agreement or appearance in an EU court for which the Community unitary rights regulations refer to the respective Brussels I rules (art 25, 26 Brussels I Regulation (recast)) or, in case of the Community Plant Regulation, Lugano provisions (art 102(2) Community Plant Regulation). In order to preserve the purpose of concentration of Community Trade Mark (and Design) actions to specialized courts, the Community Trade Mark Regulation and the Community Design Regulation restrict prorogation to courts defined by the Member States as Community Trade Mark (or Design) courts (art 97(4) Community Trade Mark Regulation; art 82(4) Community Design Regulation; see Austrian Federal Court of Justice, 11 December 2007 [2009] GRURInt. 74, 75, under para 2.2, Personal Shop).

A further venue is jurisdiction ‘in the courts of the Member State in which the act of infringement has been committed or threatened’ (art 97(5) Community Trade Mark Regulation; art 82(5) Community Design Regulation) or, in the Community Plant Regulation, ‘in the courts for the place where the harmful event occurred’ (art 101(3) Community Plant Regulation). In contrast to the term ‘place where the harmful p. 1793event occurred’ in art 7(2) Brussels I Regulation (recast) and art 101(3) Community Plant Regulation, the term ‘act of infringement’ in art 97(5) Community Trade Mark Regulation; art 82(5) Community Design Regulation does not refer both to the place of the event giving rise to the damage and the place where the damage occurred. Rather, the Court has held that the concept of ‘act of infringement’ ‘relates to active conduct on the part of the person causing that infringement. Therefore, the linking factor provided for by that provision refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects’ (ECJ Case C-360/12 Coty Germany GmbH v First Note Perfumes NV, ECLI:EU:2014:1318 at [34], [37]). Consequently, if an allegedly infringing product is sold and delivered in Member State A, followed by a resale by the purchaser in another Member State B, art 97(5) Community Trade Mark Regulation / art 82(5) Community Design Regulation do not grant jurisdiction for an infringement action against an original seller who did not itself act in the Member State B where the court seized is situated (ECJ Case C-360/12 Coty Germany GmbH v First Note Perfumes NV, ECLI:EU:2014:1318, para 38).

As concerns the scope, jurisdiction based on domicile or establishment and agreement or appearance encompasses all acts of infringement committed in the territory of any Member State (art 98(1) Community Trade Mark Regulation; art 84(1) Community Design Regulation; art 101(2) final sentence Community Plant Regulation), whereas jurisdiction at the ‘act of infringement’ (or place where the harmful event occurred) excludes actions for a declaration of non-infringement and applies only ‘in respect of acts committed or threatened within the territory of the Member State in which that court is situated’ (art 98(2) Community Trade Mark Regulation; art 84(2) Community Design Regulation; art 101(3) 2nd sentence Community Plant Regulation).

Finally, the Community Trade Mark Regulation and Community Design Regulation allow application of certain special grounds of jurisdiction found in the Brussels I Regulation recast (in particular art 8(1) Brussels I Regulation (recast) on joint defendants, for a list see art 94(1) Community Trade Mark Regulation; art 79(1) Community Design Regulation), and permit →provisional measures to be granted also by courts other than Community Trade Mark (Design) courts (art 103(1) Community Trade Mark Regulation; art 90(1) Community Design Regulation). However, only provisional measures granted by courts competent under art 97(1)–(4) Community Trade Mark Regulation / art 82(1)–(4) Community Design Regulation are eligible for cross-border recognition and enforcement in all EU Member States (art 103(2) Community Trade Mark Regulation; art 90(3) Community Design Regulation), whereas provisional measures based on other grounds of jurisdiction are limited to the territory of the state to which the rendering court belongs.

For coordination of proceedings, the unitary rights regulations include provisions which are limited to a conflict between infringement and validity proceedings (art 104 Community Trade Mark Regulation; art 91 Community Design Regulation; art 106 Community Plant Regulation; on the interpretation of ‘special grounds’ to continue infringement proceedings in art 104 Community Trade Mark Regulation see Starbucks (UK) Ltd v British Sky Broadcasting Group plc; EMI (IP) Ltd v British Sky Broadcasting Group plc [2012] EWCA Civ 1201, [102]–[112]), or infringement actions involving the same cause of action between the same parties, where one court is seized on the basis of a Community unitary right and the other is seized on the basis of a parallel national trade mark or design (art 109, Recital (17) Community Trade Mark Regulation; art 95 Community Design Regulation; on the limitation to ‘infringement proceedings’ see Prudential Assurance v Prudential Insurance [2003] EWCA Civ 327, [44–5], contra James Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, OUP 2011) para 8.71). For other scenarios which the lis pendens provisions (→Lis alibi pendens) of the unitary rights regulations do not cover, it would seem appropriate to apply the corresponding provisions of the Brussels I Regulation (recast) (art 29, 30 Brussels I Regulation (recast); Austrian Federal Court of Justice, 28 September 2006 [2007] GRURInt. 433, 434 under para 4.1, Cilgin Boga = [2008] IIC 245).

2. European patents and European patents with unitary effect

Whereas the jurisdictional rules of the Community Trade Mark Regulation, the Community Design Regulation and the Community Plant Regulation deviate in some respects from the general rules p. 1794of the Brussels regime, the general rules of European civil procedure continue to apply to European patents, subject only to a minor exception for claims for grant of a European patent, for which the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent ((Protocol on Jurisdiction and Recognition) of 5 October 1973, available at <www.epo.org>) applies.

This situation will change significantly once the ‘European Patent Package’ consisting of the UPC Agreement (Agreement of 19 February 2013 on a Unified Patent Court, [2013] OJ C 175/1), the Unitary Patent Regulation (Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, [2012] OJ L 361/1) and the Translation Regulation (Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, [2012] OJ L 361/89) enters into force (see also →Unitary intellectual property rights and private international law). The Patent Package is intended to complement the existing unified granting procedure under the European Patent Convention (Convention on the Grant of European Patents of 5 October 1973 as revised by the Act revising Article 63 EPC of 17 December 1991 and the Act revising the EPC of 29 November 2000) by establishing a new Unified Patent Court (UPC) with multinational panels (art 8 UPC Agreement) as a court common to all contracting Member States (art 1, 2nd sentence UPC Agreement). Subject to a possible opt-out in the seven-year transitional period (art 83(1), (3) UPC Agreement), the Patent Package will bring about two core changes, namely the creation of a European patent with unitary effect (by the Unitary Patent Regulation) and the concentration of infringement litigation over simple European (European Patent Convention-granted) patents and over European patents with unitary effect in a single Unified Patent Court with its own substantive and procedural provisions (UPC Agreement; Statute of the Unified Patent Court, [2013] OJ C 175/29; Rules of Procedure of the Unified Patent Court).

This new common court will consist of a Court of First Instance, a Court of Appeal in Luxembourg and a Registry at the seat of the Court of Appeal (art 6 UPC Agreement). The Court of First Instance will be decentralized and consist of a central division in Paris with branches in London and Munich, as well as local and regional divisions. Local divisions may be established upon request by each contracting state, with, depending on the number of patent cases, up to four local divisions per contracting state. Regional divisions may be set up by two or more contracting states (for details see art 7 UPC Agreement). The division of competence between the central division and the local or regional divisions is spelled out in art 33 UPC Agreement.

For issues of international jurisdiction, the relationship between the new instruments of the Patent Package and the general corpus of EU civil procedure is simplified by the fact that the Unitary Patent Regulation does not include jurisdictional provisions. Rather, art 31 UPC Agreement makes clear that ‘[t]‌he international jurisdiction of the [Unified Patent] Court shall be established in accordance with Regulation (EU) No. 1215/2012 or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention)’, while the ‘internal allocation of proceedings’ among the divisions of the Unified Patent Court is governed by art 33 UPC Agreement (Recital (5) Regulation 542/2014 (Regulation (EU) No 542/2014 of the European Parliament and of the Council of 15 May 2014 amending Regulation (EU) No 1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice, [2014] OJ L 163/1)).

Even if the Brussels I Regulation (recast) thus governs international jurisdiction for European patents and European patents with a unitary character, the adoption of the Patent Package made certain changes in the Brussels framework inevitable (see art 89(1) UPC Agreement). These changes were implemented by Regulation 542/2014, which has inserted four new arts as arts 71a–71d into the Brussels I Regulation (recast). Article 71a(1) Brussels I Regulation (recast) makes clear that a ‘court common to several Member States’, such as the Unified Patent Court, ‘shall be deemed to be a court of a Member State when, pursuant to the instrument establishing it, such a common court exercises jurisdiction in matters falling within the scope of this Regulation’. This change was p. 1795considered necessary as the internal allocation of jurisdiction within the different divisions of the Unified Patent Court may lead to jurisdiction in a UPC Agreement contracting state different from the state which would have jurisdiction under the Brussels I Regulation (recast) (European Commission, ‘Proposal of 26 July 2013 for a Regulation of the European Parliament and of the Council amending Regulation (EU) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters’ COM(2013) 554 final, pp 4–5; for doubts as to the compatibility with the as yet unamended →Lugano Convention see Pedro de Miguel Asensio, ‘Regulation (EU) No. 542/2014 and the International Jurisdiction of the Unified Patent Court’ [2014] IIC 868, 873–4).

The jurisdiction of the Unified Patent Court as a common court is then determined by art 71b Brussels I Regulation (recast). For defendants domiciled in an EU Member State, the Unified Patent Court has jurisdiction where, under the Brussels I Regulation (recast) (eg arts 4, 24(4), 25, 26 Brussels I Regulation (recast)), ‘the courts of a Member State party to the instrument establishing the common court would have jurisdiction in a matter governed by that instrument’ (art 71b(1) Brussels I Regulation (recast)). For defendants not domiciled in an EU Member State, for which the Brussels I Regulation (recast) in general does not apply and only exceptionally confers jurisdiction (eg under arts 24(4), 25 Brussels I Regulation (recast)), art 71b(2) Brussels I Regulation (recast) adds that ch II of the Brussels I Regulation (recast) ‘shall apply as appropriate regardless of the defendant’s domicile’. Moreover, ‘[a]‌pplication may be made to a common court for provisional, including protective, measures even if the courts of a third State have jurisdiction as to the substance of the matter’. Article 71b(2) thus provides for a universal application of the Brussels regime also in relation to defendants from third states, a proposal which failed in the reform of the general rules. Finally, for defendants not domiciled in an EU Member State, art 71b(3) Brussels I Regulation (recast) establishes a supplementary forum which is different from the forum actoris found in the Community Trade Mark, Design and Plant Variety Regulations: art 71b(3) Brussels I Regulation (recast) provides that ‘where a common court has jurisdiction over a defendant under point 2 [ie under ch II of the Brussels I Regulation (recast)] in a dispute relating to an infringement of a European Patent giving rise to damage within the Union, that court may also exercise jurisdiction in relation to damage arising outside the Union from such an infringement’. However, ‘[s]uch jurisdiction may only be established if property belonging to the defendant is located in any Member State party to the instrument establishing the common court, and the dispute has a sufficient connection with any such Member State’. Recital (7) Brussels I Regulation (recast) explains when such a ‘sufficient connection’ may be established, ‘for example because the claimant is domiciled there or the evidence relating to the dispute is available there’. Moreover, ‘in establishing its jurisdiction, the common court should have regard to the value of the property in question, which should not be insignificant and which should be such as to make it possible to enforce the judgment, at least in part, in the Member States parties to the instrument establishing the common court’. This new supplementary forum, which was probably included to extend jurisdiction of the Unified Patent Court to infringements outside the EU and to make the Court a more patentee-friendly venue (Pedro de Miguel Asensio, ‘Regulation (EU) No. 542/2014 and the International Jurisdiction of the Unified Patent Court’ [2014] IIC 868, 879), goes beyond tort jurisdiction under art 7(2) Brussels I Regulation (recast) (which already establishes jurisdiction for infringements in all Member States if the event giving rise to the damage occurred in the forum state, see ECJ Case C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, ECLI:EU:C:2012:220 para 30). Rather, similar to an objective joinder provision, on condition that the defendant has sufficient assets (unrelated to the infringement) in the forum state, art 71b(3) Brussels I Regulation (recast) extends the jurisdiction of the Unified Patent Court ‘to damage arising outside the Union from such an infringement’. The wording of this provision could be interpreted in two ways. On the one hand, one might argue that the provision aims at extending jurisdiction to subsequent (economic) damage arising outside the EU resulting from an infringement happening inside the EU. However, such an understanding would be contrary to the interpretation of damage in art 7(2) Brussels p. 1796I Regulation (recast), for which the ECJ has held that the ‘place where the damage occurred’ is (only) the country of registration (for registered rights, ECJ Case C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, ECLI:EU:C:2012:220, paras 27–9), and in particular does not ‘encompass any place where the adverse consequences can be felt of an event which has already caused damage actually arising elsewhere’ (ECJ Case C-364/93 Antonio Marinari v Lloyds Bank plc and Zubaidi Trading Company [1995] ECR I-2719, para 14). Accordingly, it is more likely that art 71b(3) Brussels I Regulation (recast) aims at extending jurisdiction of the Unified Patent Court to infringements of European patents occurring outside the EU. In other words, provided that the Unified Patent Court has jurisdiction because an EPC patent granted for a UPC contracting state has been infringed, art 71b(3) Brussels Regulation seems to extend this jurisdiction also to infringements of parallel EPC patents granted for EPC contracting states outside the EU (for a criticism as exorbitant see Pedro de Miguel Asensio, ‘Regulation (EU) No. 542/2014 and the International Jurisdiction of the Unified Patent Court’ [2014] IIC 868, 879–83; for a more positive view Paul Torremans, ‘An International Perspective II: A View from Private International Law’ in Justine Pila and Christopher Wadlow (eds), The Unitary EU Patent System (Hart Publishing 2015) 161, 173–4).

Moreover, art 71c Brussels I Regulation (recast) extends the application of the lis pendens provisions of the Brussels I Regulation (recast) (arts 29–32) to proceedings brought in the Unified Patent Court and in another Member State court. Finally, art 71d Brussels I Regulation (recast) renders the Brussels I recognition and enforcement provisions applicable to the recognition and enforcement of ‘judgments given by a common court which are to be recognized and enforced in a Member State not party to the instrument establishing the common court’ (for Member States party to the instrument, art 82 UPC Agreement applies; see art 71d, 2nd sentence Brussels I Regulation (recast)), and vice versa to ‘judgments given by the courts of a Member State not party to the instrument establishing the common court which are to be recognised and enforced in a Member State party to that instrument’.

Literature

See entry →Unitary intellectual property rights and private international law.