Professor Dr. Alexander von Mühlendahl, J.D., LL.M.ALICANTE4 July 2018

CIVIL PROCEDURE: JURISDICTION

Professor Dr. Alexander von Mühlendahl, J.D., LL.M.Alicante

4 July 2018

CIVIL POCEDURE: JURISDICTION

Preliminary

The rules applicable to civil litigation for the enforcement of IPRs are not harmonized world-wide and not harmonized in the EU.EU Member States remain free to operate their court systems as well as develop, adapt and change their rules applicable to proceedings before civil court for the infringement of IPRs

Exception: jurisdiction

Excursus

Can an IPR valid in country A be infringed by activity in country Y?

The issue of extraterritorial infringements

Principal issue

Obtaining jurisdiction over a defendant, especially over a defendant who has no domicile, establishment or other activity within the jurisdiction

Establishing jurisdiction over a “local” defendant

Application of “local” rules on jurisdiction

National rules

All countries have rules on how to obtain jurisdiction over a local or foreign defendant, usually determined by domicile or habitual residence in the country, or by acts committed in the country

Distinction must be made between contacts necessary to establish jurisdiction and acts necessary within the jurisdiction to find infringement of an IPR

Establishing jurisdiction over a “foreign” defendant

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European Union rules of universal application

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 (recast) (OJ L 351, 20.12.2012, p.1)

European Union rules

Principle

An action against a defendant domiciled in the EU may be brought for any and all of his liabilities at the court(s) of the Member State where the defendant is domiciled:

Article 41. Subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.2. Persons who are not nationals of the Member State in which they are domiciled shall be governed by the rules of jurisdiction applicable to nationals of that Member State.

European Union rules

Article 51. Persons domiciled in a Member State may be sued in the courts of another Member State only by virtue of the rules set out in Sections 2 to 7 of this Chapter.2. In particular, the rules of national jurisdiction of which the Member States are to notify the Commission pursuant to point (a) of Article 76(1) shall not be applicable as against the persons referred to in paragraph 1.

European Union rules

Article 61. If the defendant is not domiciled in a Member State, the jurisdiction of the courts of each Member State shall, subject to Article 18(1), Article 21(2) and Articles 24 and 25, be determined by the law of that Member State. 2. As against such a defendant, any person domiciled in a Member State may, whatever his nationality, avail himself in that Member State of the rules of jurisdiction there in force, and in particular those of which the Member States are to notify the Commission pursuant to point (a) of Article 76(1), in the same way as nationals of that Member State.

European Union rules: jurisdiction at the forum delicti comissi

Article 7A person domiciled in a Member State may be sued in another Member State:(1) … (2) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur;…

European Union rules: jurisdiction on the basis of joining a defendant

Article 8A person domiciled in a Member State may also be sued(1) where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings;…

European Union rules: exclusive jurisdiction

Article 24The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:… ;(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place.…

European Union: jurisdiction over defendants for the infringement of EU trade marks (and designs)

Establishing EU trade mark courts

Article 123 - EU trade mark courts

1.The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, which shall perform the functions assigned to them by this Regulation. 2. …

Exclusive subject-matter jurisdiction of EU trade mark courts

Article 124 - Jurisdiction over infringement and validity The EU trade mark courts shall have exclusive jurisdiction: (a) for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to EU trade marks; (b) for actions for declaration of non-infringement, if they are permitted under national law; (c) … (d) for counterclaims for revocation or for a declaration of invalidity of the EU trade mark pursuant to Article 128.

International jurisdiction of EU trade mark courts

Article 125 - International jurisdiction 1.Subject to the provisions of this Regulation as well as to any provisions of Regulation (EU) No 1215/2012 applicable by virtue of Article 122, proceedings in respect of the actions and claims referred to in Article 124 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.

International jurisdiction of EU trade mark courts

Article 125 - International jurisdiction …2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.

International jurisdiction of EU trade mark courts

Article 125 - International jurisdiction …3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat.

International jurisdiction of EU trade mark courts

Article 125 - International jurisdiction …4. Notwithstanding the provisions of paragraphs 1, 2 and 3: (a) Article 25 of Regulation (EU) No 1215/2012 shall apply if the parties agree that a different EU trade mark court shall have jurisdiction; (b) Article 26 of Regulation (EU) No 1215/2012 shall apply if the defendant enters an appearance before a different EU trade mark court.

International jurisdiction of EU trade mark courts

Article 125 - International jurisdiction …5. Proceedings in respect of the actions and claims referred to in Article 124, with the exception of actions for a declaration of non-infringement of an EU trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act referred to in Article 11(2) has been committed.

Territorial scope of jurisdiction of EU trade mark courts

The law

Article 126 - Extent of jurisdiction 1. An EU trade mark court whose jurisdiction is based on Article 125(1) to (4) shall have jurisdiction in respect of: (a) acts of infringement committed or threatened within the territory of any of the Member States; ... 2. An EU trade mark court whose jurisdiction is based on Article 125(5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated.

Current issues Jurisdiction in the basis of the forum delicti commissi

Case C-172/18 – AMS Neve v. Heritage Audio SLQuestions referredIn circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B: …

Questions referred

In circumstances … :i) does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory?ii) if not, which other criteria are to be taken into account by that EU trade mark court in determining whether it has jurisdiction to hear that claim? iii) in so far as the answer to (ii) requires that EU trade mark court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?

Civil Procedure

Conclusions

Civil procedure

Q & A