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CONFÉRENCE DE LA HAYE DE DROIT INTERNATIONAL PRIVÉ HAGUE CONFERENCE ON PRIVATE INTERNATIONAL LAW EXÉCUTION DES JUGEMENTS ENFORCEMENT OF JUDGMENTS Doc. prél. No 13 Prel. Doc. No 13 avril / April 2001 Rapport de la réunion d experts sur les aspects de la propriété intellectuelle de la future Convention sur la compétence et les jugements étrangers en matière civile et commerciale Genève, 1er février 2001 établi par le Bureau Permanent * * * Report of the experts meeting on the intellectual property aspects of the future Convention on jurisdiction and foreign judgments in civil and commercial matters Geneva, 1 February 2001 drawn up by the Permanent Bureau Document préliminaire No 13 d avril 2001 à l intention de la Dix-neuvième session de juin 2001 Preliminary Document No 13 of April 2001 for the attention of the Nineteenth Session of June 2001 2 TABLE OF CONTENTS Page 1. GENERAL COMMENTS EXCLUSIVE JURISDICTION CONCERNING REGISTERED INTELLECTUAL PROPERTY RIGHTS... 4 Scope of Article 12(4) with respect to patents and trademarks Patents Trademarks and Unregistered rights... 5 Article 12(5)... 5 Article 12(6)... 6 Other grounds of jurisdiction (in particular Article 10) JURISDICTION RULES CONCERNING COPYRIGHT OTHER QUESTIONS... 7 a) Provisional and protective measures (Article 13)... 7 b) Article SCOPE OF THE PRELIMINARY DRAFT CONVENTION AND INTELLECTUAL PROPERTY RIGHTS FUTURE WORK...10 Annex 1 Draft Agenda...11 Annex 2 List of Participants...12 3 Report of the experts meeting on the intellectual property aspects of the future Convention on jurisdiction and foreign judgments in civil and commercial matters Geneva - 1 February drawn up by the Permanent Bureau The meeting was opened by Professor Teun Struycken, Chairman of the Netherlands Standing Government Committee on Private International Law. He proposed that the meeting be chaired by Ms Andrea Schulz (Germany). This proposal was unanimously accepted. The Chair made a brief summary of the two-day WIPO conference, which preceded the experts meeting. She emphasised the fact that intellectual property (hereafter IP) is a huge field, that the various IP rights require separate examination and that, at least for some IP rights, the problems of jurisdiction, although distinct, are closely linked to questions of applicable law. The Chair suggested that the experts follow the outline of the draft agenda (see Annex 1), which was accepted by the meeting, and opened the floor for general comments. 1. General comments The Japanese delegation distributed a paper reflecting Japan's concerns in relation with IP and the Hague Convention. This paper sets forth that Member States have agreed on an exclusive competence for proceedings on the registration, validity, nullity or revocation of patents, trade mark designs and other similar rights required to be deposited or registered (see Article 12, paragraph 4, preliminary draft Hague Convention). The paper then poses the question as to whether there should also be an exclusive jurisdiction for the infringement of registered IP rights and discusses the pros and cons of such an approach. On behalf of the EU, an expert from Sweden noted that IP rights are of major importance in a world-wide convention. Therefore, it would be very useful to have rules on jurisdiction and recognition with respect to IP rights in the Hague Convention. However, these rules have to provide predictability and acceptable grounds for jurisdiction. On behalf of the US delegation, it was pointed out that over 100 pages of comments received by the United States Patent and Trademark Office had been distributed by e- mail to the delegations and that copies were available at the meeting. Those comments demonstrated two things in particular: (1) almost uniform opposition in the private sector to the current text as it applies to intellectual property rights; and (2) great difficulty in understanding the structure of the draft convention text. It was pointed out that the US could not become a Party to a convention structured along the lines of the preliminary draft Convention. In particular, the US could not accept (in personam) jurisdiction in infringement on IP rights cases over a defendant who had no relation with the jurisdiction. 1 The draft agenda adopted by the meeting is attached as Annex 1 to this Report. The list of experts present at this meeting is attached as Annex 2 to this Report. 4 2. Exclusive jurisdiction concerning registered intellectual property rights While many experts expressed the view that proceedings which have as their object the registration, validity, nullity and even revocation of registered rights should fall under the rule of exclusive jurisdiction (Article 12(4) of the preliminary draft Hague Convention), the US delegation raised questions about the need for exclusivity, and asked whether the real concern was exclusivity or concentration of jurisdiction. Some of the US private sector comments clearly oppose exclusive jurisdiction, and most of these comments favour exclusion of intellectual property rights from scope. Scope of Article 12(4) with respect to patents and trademarks Among the experts who favoured exclusive jurisdiction for proceedings having as their main object the validity of registered patents and trademarks, opinions were divided as to the question whether matters of infringement of registered IP rights should also fall within the scope of the exclusive jurisdiction. It was noted that it is generally understood that questions of infringement do not fall under the scope of the exclusivity provision (Article 16) of the Brussels and Lugano Conventions (except in the UK, where courts hold that the question of infringement is too intertwined with the question of validity to be treated separately). Patents The delegations of the UK and Australia indicated that in their view, the questions of validity and infringement are closely linked. Experience shows that it is almost inevitable that the defendant attacked for infringement of the patent will defend himself by attacking the validity of this patent. Moreover, in most national systems, the two questions are tried by the same courts, which are often specialised courts (exceptions include Germany and Austria). The danger of having two different courts, one trying the question of the validity of the patent and another one trying the infringement question, which will often not be in the country of registration, is that it could lead to different views on the width of the patent. This would run counter to the concept that a patent which grants a monopoly with respect to a certain product or process, can have only one scope, and not a different scope for validity than for infringement. In addition, patent law involves considerations of public policy. For all these reasons, these two delegations supported the view that exclusive jurisdiction should apply to both the validity and the infringement of the patent. On the question of which court should have exclusive jurisdiction, the answer was not definitive, but it was said that it could very well be the court of the country in which the IP right is registered. This view was also supported by the Chinese delegation. A number of delegations, including Switzerland, Finland and Sweden, supported a more flexible view: co-ordination between the proceedings on validity and on infringement can be ensured by other ways than by providing that the court of the place of registration of the IP right has exclusive jurisdiction to hear all matters related to this right (validity issues as well as infringement issues). For instance, by a suspension of proceedings by the court seized with the infringement claim, pending a decision on the validity by the court of the place of registration of the IP right (this latter option would require an adaptation of Article 22). The German delegation observed, however, that in the case of the European bundle patent granted under the European Patent Convention (EPC), this 5 could mean that a court seized with infringement proceedings concerning a bundle of e.g. 13 national patents would then have to invite the parties to bring validity proceedings in each of the 13 countries concerned. The UK delegation strongly opposed such multiplication of litigation. The delegations opposed to extending exclusive jurisdiction of the country of registration also to infringement claims equally pointed out that insofar as patent disputes were arbitrable, it seemed inconsistent to confer exclusive jurisdiction for such disputes upon State courts. The expert of AIPPI raised another question to be taken into account: how to deal with IP rights which are registered in a non-contracting State since Article 12(4) only refers to Contracting States (does Article 12(4) have a so-called reflex effect?). He added that this question had not been solved in the Brussels and Lugano Conventions. Trademarks and Unregistered rights An expert from the industry (International Trademark Association, hereafter INTA) indicated that in its current wording Article 12(4) would not encompass US trademarks, since, in the US, common law trademarks are not required to be registered. They are acquired by use of the mark and may, but do not have to, be registered. She further suggested that coverage by the Hague Convention be limited to rights covered by TRIPS. Another expert drew attention to the phenomenon of well-known trademarks under the Paris Convention, which are protected whether they are registered or not, and which could create problems in relation to the exclusive jurisdiction clause. An expert from the UK emphasised that registered rights, common law rights and allied rights should all be treated in the same way. However, he said that his country had no experience so far with trying to distinguish between registered and unregistered trademarks under the Brussels or Lugano Conventions, which both make this distinction. Another expert noted that it was difficult to localise an unregistered trademark. In any event, under the Brussels or Lugano Convention, the defendant's forum would still be available. Finally, an expert mentioned that the question of the validity of a trademark is only seldom raised in a licence agreement litigation, as in general the licensee has no interest to obtain the invalidation of the mark he has been granted the right to use in his business by the license. The Chair noted that there seemed to be no consensus at this stage on the question whether to include infringement in the scope of any exclusive jurisdiction rule for registered patents and trademarks. She pointed out that even if both questions of validity and of infringement would fall under the same jurisdiction, they would not necessarily be tried before the same judge within that jurisdiction. Article 12(5) It was noted that the inclusion of Article 12(5) in the draft Convention might depend on whether infringement would fall under the exclusive jurisdiction clause of Article 12(4). The Chair indicated that there were two possible interpretations in that respect: 6 - if infringement is included in Article 12(4), Article 12(5) could remain in the draft Convention as a concurring jurisdiction. This is the view also taken in the Nygh/Pocar Report, Preliminary Document No 11; - if Article 12(4) does not cover infringement, then, according to another opinion, Article 12(5) becomes necessary to make this explicit. The reason for this need is that the exclusive jurisdiction provision in Article 16(4) of the Brussels Convention, although almost identical to Article 2(4) of the Hague draft, has been interpreted by UK courts as including infringement actions, although not mentioned, whenever invalidity is raised as a defense or counter-claim in infringement proceedings. Given the absence of any binding authority for the interpretation of a future Hague Convention, any similar ambiguity therefore has to be avoided. At this stage, there was no clarity as to which interpretations should prevail. Article 12(6) It became clear that Article 12(6) is only necessary if the jurisdiction for infringement (and other, e.g. licence litigation) actions is not exclusive under Article 12(4). The question then is how far the jurisdiction of a court in any State other than the State of registration reaches, namely if this court may decide on validity as an incidental question. The point was raised that the concept of incidental question is quite different in civil law and common law countries. Delegations from common law countries gave examples of validity as a possible incidental question according to their understanding: validity of a patent as incidental to the lawfulness of the distribution of assets according to a will (yes); validity of a patent as incidental to an infringement suit (no, because infringement and validity were so closely intertwined that the question is regarded as essential, not incidental), validity of patent in license litigation (yes or no, depending on the factual circumstances). For a civil lawyer, there is no particular problem with the incidental question concept since a judgment does not have erga omnes effects with respect to an incidental question and since the question can always be re-decided at another stage by another judge. One expert asked what would be the effect of a decision on validity as incidental question in the State of registration of the IP right. He was of the opinion that the court seized by an infringement claim should be able to suspend and wait for a decision on the validity of the right rendered by the court of the place of registration of this right. Moreover, some experts saw problems arising under competition law if, on the same market, a right held by owner X was (incidentally, and therefore only with effect inter partes) held to be invalid in the relations between X and Y (following infringement proceedings between them), while the same right was held to be valid in the relations between X and everyone else. No final conclusion was reached in respect of Article 12(6). Other grounds of jurisdiction (in particular Article 10) The foreseeability test posed in Article 10(1)(b) was discussed in relation with the principle of territoriality of IP rights. In that respect, several experts raised the concern that the foreseeability test could create problems, e.g. in cases of strict liability. In response to this remark, other delegations pointed out that in such cases the foreseeability test was simply redundant. 7 It was noted that because of the territoriality of IP rights, the act of infringement and the injury will, according to one opinion, always occur in the same jurisdiction, with the possible exception of the Internet. The foreseeability test would only come into play if one follows the opposite approach, i.e. in the cases in which the criteria of subparagraph (a) and (b) would lead to different jurisdictions. Certain experts were concerned about giving a wide interpretation to Article 10(1)(b), which could have as a consequence that pure economic loss would grant a basis for jurisdiction and emphasised that this is not desirable. The Chair referred to the Nygh/Pocar Report, pp , which explains that Article 10(1)(b) excludes indirect harm. The question was asked whether the scope of Article 10(1) should not be limited for infringements on IP rights made via the Internet. It was said in that respect that an individual who puts something on the web which is legal in his country, cannot foresee that it is illegal in another country where the downloading occurs. The Chair noted that at this stage of the discussion there seemed to be a consensus that in infringement cases act and injury fall together, in the same State, and that therefore the foreseeability test is redundant. This was contested by one delegation. However, the Chair indicated that opinions seemed divided on the question of the Internet, and that maybe safe harbour clauses would be an option to consider. 3. Jurisdiction rules concerning copyright The experts discussed whether copyrights should also fall under the scope of exclusive jurisdiction provided for by Article 12(4) of the preliminary draft Convention. It was pointed out that in the field of copyrights, questions of applicable law and jurisdiction are very closely linked and that the country of protection principle is not so widely recognised with respect to copyrights as it is for patents and trademarks. In some countries, copyrights are required to be registered, in other countries they are created by operation of law but may be registered (for instance, in the US), and in a third group of countries they come into being and exist without formalities or registration. In that respect, it was mentioned that non-registered copyrights are difficult to localise, since there is no visible attachment. Once a copyright exists in one country (whether registered or not), it also exists in other countries by the effect of international conventions (Bern Convention) and customary principles. Hence, the importance of consolidating all the claims against a copier under different laws in one single court. The experts then discussed briefly the implications of Articles 4, 6 and 10 of the draft Convention for copyrights. The Chair summed up the discussion by noting that none of the experts had supported exclusive jurisdiction for copyrights, whether registered or not. 4. Other questions a) Provisional and protective measures (Article 13) The experts discussed whether there were particular IP questions to be addressed in Article 13. It was pointed out that the concept of property in the present Article 13(2) was not defined. According to some experts, the meaning of property should be understood widely, including both tangible and intellectual property. Article 13 would then also be applicable with respect to IP rights. One expert indicated that the possibility 8 to take provisional measures against a service provider should be included in Article 13. Another expert suggested replacing and by or at the end of Article 13(3)(a). b) Article 37 The experts of the European Commission reminded that, further to the general rules of the Council Regulation having replaced the Brussels I Convention, any disconnection clause will have to cover the specific regimes concerning jurisdiction which are contained in Community secondary legislation, in particular those dealing with unitary Community IP rights (Community Trademark, Community breeder s right in a new plant variety and, in a very near future, Community Design rights and a Community Patent). To give an example, the Council Regulation (EC) n. 40/94 of 20 December 1993 on the Community Trademark stipulates that the Office for the Harmonization in the Internal Market (OHIM), a Community agency located at Alicante (Spain), has jurisdiction to decide direct actions concerning the revocation or the invalidity of the Community Trademark. Such decisions are subject to appeal before the Court of First Instance and, on points of law only, to further appeal to the Court of Justice of the European Communities, but, if they are not appealed, they have the value of res judicata in the EU-Member States. A limited number of specialised courts of the Member States have been given jurisdiction to hear actions of infringement of Community Trademarks according to a set of rules of conflict which allow the plaintiff in each case to choose among two possible fora:?? the court for the place where the acts of infringement have been committed, having a territorial jurisdiction limited to the country where the court is situated, or?? the court of the Member State where the defendant has his domicile, with a jurisdiction extending to the whole territory of the European Union. If the defendant has no domicile within the EU, a number of subsidiary jurisdiction rules lead in each case to the determination
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