Forum Shopping under the Brussels Convention

England and Holland

The English High Court, in a series of decisions in 1997, and confirmed in the Court of Appeal, has made it clear that the Brussels Convention applies to litigation in England. In three cases, Pearce v Ove Arup; Mecklermedia Corporation v Congress Gessellshaft; and Coin Controls v Suzo, the court accepted jurisdiction under the Brussels Convention to hear proceedings against foreign defendants for infringement of United Kingdom and foreign intellectual property rights.

In Pearce, the plaintiff brought proceedings against Ove Arup, an English resident, for infringement of copyright by construction of a building in Rotterdam and joined, among others, the City of Rotterdam. Lloyd J heard the proceedings for infringement of copyright against the City, (although ultimately he decided that there had been no infringement).

In Mecklermedia, Jacob J accepted that he had power to hear passing-off proceedings against the German company, Congress Gessellshaft, which had no presence in England and had carried out no acts in England. The company had only sent advertising material for an exhibition to England, where the cause of action arose.

In Coin Controls, Laddie J was prepared to hear proceedings for infringement of an English patent brought against an English company and its Dutch parent which was supplying the allegedly infringing product to England.

However, he refused to consider proceedings for infringement of the corresponding German and Spanish patents brought against the German subsidiary and the (same) Dutch parent. The validity of both those patents was going to be in issue. Article 16(4) of the Brussels Convention states that the courts of the contracting state in which the patent is registered have exclusive jurisdiction in proceedings concerned with the validity of patents. As the questions of scope and validity were inextricably linked, he considered that Article 16(4) prevented his hearing that part of the action.

In a subsequent English case, Akzo v Fort Dodge, Laddie J refused to stay proceedings in Holland for an injunction for infringement of the English patent in England. When the case went to the Court of Appeal, the Court confirmed Lloyd J's decision in Pearce that proceedings for infringement of an intellectual property right can be brought either in the country of domicile of the defendant or where the infringement took place.

The Court of Appeal also took the view that where a defendant had infringed a European patent in the contracting state where he was domiciled if another defendant had infringed the corresponding patent in another contracting state where that other was domiciled, that other could not be joined as a party to proceedings in the first contracting state under Article 6(1) of the Convention. The Court pointed out that the two patents granted two entirely independent, national rights to be assessed according to the two different (albeit harmonised) national laws. The Court of Appeal considered that the connection between the two claims was not of such a kind that it was "expedient to determine them together in order to avoid the risk of irreconcilable judgements resulting from separate proceedings" (the test laid down by the European Court of Justice for combining proceedings under Article 6(1)). However in the corresponding case in Holland the Dutch Court rejected that argument.

The Court of Appeal also took the view that, if validity of a patent was in issue, by Article 16(4) only the state in which the patent had been granted had power to hear the dispute. (This could give rise to an interesting situation in Holland, for example, where validity can be raised for the first time on appeal. What happens if a defendant is put under an injunction for infringement of an English patent at first instance, having only argued infringement, and is then to raise validity on appeal?)

However the Court of Appeal considered that neither of the last two points was "acte claire" and referred the matter to the European Court of Justice.

We await the decision of the ECJ with considerable interest. It will have a major effect on the litigation of registered IP rights in Brussels Convention countries.

In the parallel case in Holland, the Dutch court was not prepared to accept that it had no jurisdiction, just because validity of the English patent was an issue. It also considered that it could assess the likelihood of the validity argument succeeding and make its decision in the light of that. However the Dutch Courts did decline jurisdiction on the ground that the sales of the product had been predominantly in the UK (99.6% to 0.4%) and the division was so disproportionate that the UK infringement could not be pursued in Holland.