Cross-Border Litigation in IP/IT Matters in the European Union: The Transformation of the Jurisdictional Landscape
A. Nuyts, N. Hatzimihail, K. Szychowska (eds.), INTERNATIONAL LITIGATION IN INTELLECTUAL PROPERTY AND INFORMATION TECHNOLOGY (Kluwer, 2008), 1-48
48 Pages Posted: 20 Jul 2017
Date Written: 2008
This chapter serves as extensive introduction to a collection of essays examining the interplay of two areas of great importance to European economic and social actors: judicial cooperation in civil and commercial matters and the protection of intellectual property rights and information technology. Both areas have found themselves the object of increased normative activity by the European Union. Community/Union activity in the former area goes back to Article 220 of the Rome Treaty and the 1968 Brussels Convention but acquired new vigor and a systematic character following the entry into force of the Amsterdam Treaty and then-Article 65 EC. Today, Community action in matters of judicial cooperation is increasingly entangled with the protection of intellectual property rights and information technology. Since the early 1990s, the Community has produced a good number of instruments legislating on intellectual property matters – mostly Directives seeking the harmonization of Member States laws, but also Regulations establishing Community forms of intellectual property and the long attempts to create a common patent tribunal with first-instance jurisdiction over Community Patents, under Article 225a EC. The Community has been taking an active and influential part in the World Intellectual Property Organization. Such prolific activity poses challenges to the sound implementation of the instruments constituting the European Judicial Area. Issues of compatibility and coherence with the existing instruments of judicial cooperation must be also be taken into notice.
The challenges are exacerbated by the specificity of the IP/IT subject matter. The fact that in this area it is even more difficult to insulate the Community space from the global IP/IT marketplace further adds to the challenges, as was illustrated in the negotiations of the Hague Conference Judgments Project. The Community has to decide, along with other international actors, which is the best forum to pursue such matters and whether the principles of the Brussels/Lugano system are appropriate.
On a different level, recent developments call for broad reflection on what the common denominators might be in international litigation involving the different IP rights. Is the major concern, as recent developments seem to suggest, the need to consolidate before court proceedings relating to infringements spread over the territories of several countries? Is it necessary and/or possible to consolidate proceedings relating to several territorially enforceable rights in the court of a country other than the one where the rights in question were created? What are the other goals that should be pursued in this matter?
The paper addresses copyright and trademark litigation (sections III and IV), considering, in the process, how new technologies, and especially the Internet, alter the landscape of European jurisdictional law (section IV). But the main focus is patent litigation (sections I and II): patent litigation has been the most fertile ground for legal developments under the Brussels regime, and European jurisdictional law in general, including, most recently, the twin decisions of the European Court of Justice of 13 July 2006 in the Roche and GAT cases. This paper brings to light the evolution of the European law – both national and community – on jurisdiction over IP cases, as it moved from a system of strict territoriality towards more flexible solutions, indeed a system of cross-border litigation. An ‘ingenious machinery’ was created by national courts in the late 1980s and then adjusted after it started to jam. The July 2006 decisions put this ‘machinery’ in more serious jeopardy. This chapter illustrates the difficulties in reconciling a system created for the needs, in general, of international litigation in civil and commercial matters with the particularities of international litigation in intellectual property matters.
Keywords: intellectual property, information technology, EU law, patent litigation, international civil litigation, Brussels I Regulation
JEL Classification: K00, K12, K13, K33, K40
Suggested Citation: Suggested Citation