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Actions for Infringement of a Foreign Intellectual Property Right in an English Court
Published online by Cambridge University Press: 17 January 2008
Extract
Recent English decisions have paved the way for English courts to apply foreign intellectual property law to the infringement of foreign intellectual property (‘IP’) rights in cases in which the court is seised of jurisdiction pursuant to the 1968 Brussels and 1989 Lugano Conventions. If one defendant can be sued pursuant to the Conventions' rules, the potential exists to consolidate in one English action claims against different defendants for the infringement of intellectual property rights from different jurisdictions. This ability to consolidate infringement actions is subject to Article 16(4) of the Conventions, the requirements of Article 6(1) and RSC Order 11, rule 1(1)(c), and the doctrine of forum non conveniens. However, it appears that in cases in which the court is seised of jurisdiction pursuant to the non-Convention rules, English courts will not be entitled to apply foreign intellectual property laws.
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References
1. Herein these Conventions are referred to collectively as the ‘Conventions’. The provisions of the Conventions that are relevant to this article are identical. The Conventions were brought into force in the UK by the Civil Jurisdiction and Judgments Act 1982 (as amended).
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14. Idem, pp.59 and 61.
15. Idem, p.59.
16. See supra n.5.
17. Of course, to commence an action in which the court is called upon to apply a foreign IP law the court must first be seised of jurisdiction pursuant to the Conventions. The relevant rules of the Conventions are in Arts.2, 5(3) and 6(1): Pearce v. Ove Arup, supra n 5.
18. I.e. all bar copyright.
19. Lynton Plc v. Compagnie Internationale de Services en Informatique (unrep., QBD, 1993 No.60), pp.14–15, and see Coins Control Ltd, supra n.13, at pp.59–60.Google Scholar
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21. Art.6 of the Conventions 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. Art.6 is applied in the same circumstances as RSC Ord.11, r.1(1)(c)—a party may be sued in England under this Art. only if he could have been properly joined in the original action had he been within the jurisdiction: Kalfelis v. Schroder, Munchmeyer, Hengst & Co. (Case C-198/87) [1988] E.C.R. 5565Google Scholar, and Molnlycke AB v. Procter & Gamble, supra n.5, at p.27.Google Scholar
22. Coins Control Ltd, supra n.13.
23. Ibid.
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27. RSC Ord.ll, r.l(l)(c) provides for extraterritorial service where the claim is brought against a person duly served within or out of the jurisdiction and a person out of the jurisdiction is a necessary or proper party thereto. The test applied to determine whether this rule is applicable is whether the party sought to be served could, if within the jurisdiction, have been joined in the original action: Société Commercials de Réassurance v. Eras International Ltd [1992] 1 Lloyd's Rep. 570, 592 (CA).Google Scholar
28. Cf. Harrods (Buenos Aires), supra n.12.