Handling IP Disputes in a Global Economy

Huw Evans

Huw.evans@nortonrosefulbright.com

+44 20 7444 2110

Norton Rose Fulbright LLP

European Market

IP Rights within the EUTrade Mark Rights (branding)• Community• National registered• National unregistered

Design Rights (shapes mainly)• Community registered• Community unregistered• National registered• National unregistered

Patent Rights (e.g. special fabric)• National• European patent with unitary effect (coming soon)

Copyright (e.g. surface decoration)• National unregistered

EU-wide laws• Court of Justice of EU determines questions of

interpretation of EU law

• Community Trade Mark Directive/Regulation

• Community Design Directive/Regulation

• Copyright Directive (aka InfoSoc Directive)

• European Patent Convention

• Trade Secrets directive – coming soon

EU-wide laws and measures• IP Enforcement Directive

– Who can enforce IP rights

– Evidence (including, disclosure/discovery and preservation of evidence)

– Interim/provisional measures

– Remedies (including injunctions, damages, legal costs, infringing product recall and publication of decision)

– But Major Procedural Differences

Where can you sue for infringement?

• For national registered or unregistered right, generally where the right is registered/exists:

– E.g. for a EP(UK) patent, it is the UK High Court or alternatively the Intellectual Property Enterprise Court (for smaller, more streamlined cases, where damages and costs are capped)

– E.g. for a EP(DE) patent, it is one of the courts of Germany and also note proceedings are bifurcated in Germany

– E.g. for a EP(FR) patent, it is the French court (which does not have specialist patent judges)

Where can you sue for infringement?

• Community right (e.g. CTMs, CDRs)

(1) Where the defendant is domiciled (in the EU)

(2) Where the defendant has an establishment

(3) Where plaintiff is domiciled

(4) Where the plaintiff has an establishment

(5) Alicante

OR where the parties have agreed to litigate

OR where the infringing act has been committed

Cross-border injunctions (Community rights)

– EU-wide injunctions are obtainable if the jurisdiction has been based on domicile and not place of infringement.

– The scope of the injunction may be limited

• Where the right-holder has restricted the territorial scope of its action

• Where the defendant proves that its acts does not affect the scope of the IP right at issue

Cross-border injunctions (National rights)• All proceedings relating to the validity of a patent must be decided by

national court (GAT v Luk [2006])

• Cross border injunctions not available if the validity of the right, registered in another MS state is in issue

• Exception for interim relief in some places(?) – not commonly invoked

• An EU national court may not grant cross border injunctions against companies domiciled in other EU states in respect of infringements in other EU states (Roche v Primus [2006])

• Only possible if there is no challenge to validity in foreign jurisdiction; and defendant is domiciled within national Court’s jurisdiction

• Although cross-border interim relief is available in some jurisdictions – e.g. the Netherlands, special criteria apply and not commonly invoked

Broad-brush comparisons of key EU Courts

Where should you sue?

• Commercial, legal & strategic considerations

– Where is the largest volume of infringement?

– Where are the infringing goods entering the EU?

– Where is your right is registered?

– Where can you get an EU wide injunction?

– Which country’s legal procedure is most advantageous to you?

– Sentiment of the judges

The UPC: The Unitary Patent System

What the UPC system will look likeCourt of Appeal (Luxembourg)

Judges: 3 Legal, 2 Technical

Jurisdiction: All matters

Court of First Instance

Local divisions (max 4 per MS) &Regional divisions (2 or more MS together)

Judges: 3 Legal (+ 1 Technical, optional)

Jurisdiction: Infringements and preliminary injunctions etc; and revocation counterclaims – but division can: (i) proceed together; (ii) bifurcate and proceed/grant a stay of infringement; or (iii) refer

whole case to Central Division if parties agree

Central Division(London: Chem / Life Sciences, Munich: Auto/Mech,

Paris: Everything else incl. IT/Telcoms)

Judges: 2 Legal, 1 Technical

Jurisdiction: DNIs and revocation actions – also referrals from Local / Regional divisions of: (i) revocation

counterclaims (bifurcated proceedings) or (ii) entire proceedings involving a revocation counterclaim

N.B. Parties can vary which division hears an action by agreement. “MS” means member state of EU.

More concerns for the future……..

• Nature of infringements• Competition law• Theft of knowledge and secrets• Is the law fit for purpose?• How to protect Big data?

Thank you for listening!

Questions?