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Reverse use of Article 7(5) Brussels Regime in IP litigation: can you sue from the establishment?

Reverse use of Article 7(5) Brussels Regime in IP litigation: can you sue from the establishment? This author Torsten Bjørn Larsen LLM PhD is Associate Professor at Aalborg University, Denmark. This article It is the purpose of this article to address whether the establishment rule in art 7(5) BR allows for reverse use in IP litigation. If that is allowed, action cannot only be brought at the establishment but also from the establishment. The result is subject to uncertainty since the Court of Justice of the European Union has not yet ruled on the issue and, since a considerable number of considerations speak both for and against, it is probably unlikely that action can be brought from the establishment. However, the opposite result cannot be fully excluded. 1. Introduction In Intellectual property (IP) litigation quite a few jurisdiction rules are available to the plaintiff. One of these—it being the more frequently used jurisdiction rule in IP litigation1—is the forum delicti rule in Article 7(2) Brussels Regime (BR)2, which I have previously addressed in IP litigation in this journal.3 Another one is the multiple defendants’ rule in Article 8(1) BR, which I have also previously addressed in IP litigation in this journal.4 Now the time has come to address certain aspects of a third and often overlooked rule in IP litigation, namely the so-called establishment rule or branch rule in Article 7(5) BR. The rule reads as follows: A person domiciled in a Member State may be sued in another Member State [ … ] as regards a dispute arising out of the operations of a branch, agency or other establishment, in the courts for the place where the branch, agency or other establishment is situated.5 Article 7(5) BR is a special jurisdiction rule.6 The rule supplements the defendant’s domicile rule in Article 4 BR.7 This means that the plaintiff may choose between the two8 along with, inter alia, the forum delicti rule in Article 7(2) BR and the multiple defendants’ rule in Article 8(1) BR, without being restricted through the doctrine of forum non-conveniens.9 The close connection principle, which is the overall justification for the rule10 and which follows from the provision itself given that it reads ‘as regards disputes arising out of the operations of the branch, agency or other establishment’11 is that the defendant has established a branch, agency or other establishment for the purpose of doing business being the place where he/she seeks an advantage and where he/she may feel the consequences of being sued.12 Thus, Article 7(5) BR is, lacking case law from the Court of Justice of the European Union (CJEU), a small defendant’s domicile rule.13 Article 7(5) BR applies when two cumulative requirements are met: First, the defendant must have a branch, agency or other establishment in an EU/EFTA Member State different from where he/she is domiciled.14 ‘Branch, agency or other establishment’, where the former two are merely illustrations of the latter15 and are thus hereinafter referred to as ‘establishment’, is defined autonomously16 and requires, inter alia, that: (i) the establishment engages in external business activity17; (ii) the establishment is subject to the direction and control of the parent18; and (iii) the establishment acts on behalf of and binds the parent.19 Secondly, the dispute must arise out of the operation of the establishment. Even though a more distant connection suffices under other special jurisdiction rules, which similar to Article 7(5) BR are based on a close connection20 namely the forum delicti rule in Article 7(2) BR as interpreted in e-Date, Wintersteiger and Pinckney,21 however, as modified in Iisjan,22 it seems likely that the connection between the dispute and the establishment must be close under Article 7(5) BR.23 In an IP context, distributing infringing products from an establishment meets the requirement of a close connection24 whereas an establishment merely being the registered owner of an IP right does most likely not, which in turn is confirmed by the lack of external business activity in any such situation.25 Based on the above the traditional scope of Article 7(5) BR in IP litigation has been to allow a plaintiff to sue the defendant at its establishment provided that the above requirements are met.26 Given the lack of CJEU case law, however, a relevant question could be whether Article 7(5) BR is limited to actions brought at the establishment or whether Article 7(5) BR also allow actions to be brought from the establishment. In other words, the question is whether reverse use is allowed under Article 7(5) BR. The following scenario may illustrate this: A company, Frogs GmbH, is a foam shoe manufacturer based in Munich/Germany. Frogs GmbH has an establishment in Copenhagen/Denmark being the registered owner of Frogs GmbH’s IP rights. Frogs GmbH markets and sells foam shoes in the European Union. Another company, Frox SpA, based in Rome/Italy with an establishment in Madrid/Spain has started selling knock-offs in the EU from its establishment in Spain. Focusing on the application of Article 7(5) BR in IP litigation Frogs GmbH cannot sue Frox SpA for infringement from its establishment in Copenhagen/Denmark because the establishment is not engaged in external business activity (cf note 18). However, the question, which is subject to the discussion in the present article, is whether Frox SpA under Article 7(5) BR could sue Frogs GmbH for non-infringement from it establishment in Spain taking into account that the knock-offs are sold from Spain. One could argue that the scenario presented above merely raises theoretical discussions given that a non-infringement action can already be brought under Article 7(2) BR following Folien Fischer.27 That is obviously true, but that does not make the discussion theoretical. Allowing the plaintiff to sue from the establishment would namely differenciate Article 7(5) BR from the forum delicti rule in Article 7(2) BR despite allowing action to be brought at what equals the plaintiff’s home domicile under both.28 The reason is that the former—Article 7(5) BR—would likely have unrestricted jurisdiction29 also known as, inter alia, extraterritorial jurisdiction,30 cross-border jurisdiction,31 global jurisdiction,32 general jurisdiction,33 central jurisdiction34 or EU-wide jurisdiction allowing the competent court to hear a claim for (non)-infringement irrespectively of where the (non)-infringement occurred whereas the latter—Article 7(2) BR—most likely has restricted jurisdiction also known as territorial jurisdiction allowing the competent court to hear a claim for (non)-infringement, which occurred in the Member State where the court is located and nowhere else. Restricted jurisdiction most likely applies to both heads of jurisdiction under Article 7(2) BR in IP litigation ie at both the place of action (‘the place giving rise to the damage’) and at the place of effect (‘the place where the damage occurred’). The reason is that the so-called mosaic rule, which applies to personality rights35 can most likely not be transferred to IP rights. This question is particular complicated and I have addressed it previously.36 This article is based on the explicit assumption that Article 7(2) BR courts have restricted jurisdiction since otherwise Article 7(5) BR would not differentiate itself from Article 7(2) BR and there would be little ratio for the legal discussion in Section 2. The present article is structured so that possible reverse use of Article 7(5) BR is addressed in Section 2 whereas a conclusion is drawn in Section 3. 2. Possible reverse use of Article 7(5) BR In order to address whether Article 7(5) BR allows for reverse use a considerable number of considerations must be taken into account. For structural reasons the arguments, which support that action cannot be brought from the establishment are addressed first whereas the arguments, which support that action can be brought from the establishment are addressed second. Finally, the arguments are balanced vis-á-vis each other. Supporting that action cannot be brought from the establishment within the meaning of Article 7(5) BR speak a number of reasons: The first reason, which is fundamental, is that allowing action to be brought from the establishment would oppose the very nature of the provision as a small defendant’s domicile rule37 given that in effect a plaintiff’s home domicile rule also known as a forum actoris would be created, which is often, but not always,38 met with hostility by the CJEU39 provided that, which is likely, the provision is subject to unrestricted jurisdiction.40 The second reason is that allowing action to be brought from the establishment, Article 7(5) BR would to some extent overlap with the forum delicti rule in Article 7(2) BR41 in the scenario presented. The reason is that action can be brought at what equals a forum actoris under both. The CJEU has consistently avoided overlapping interpretations in prior case law eg in Bier where Article 7(2) BR was interpreted not to overlap with the defendant’s domicile rule in Article 4 BR stating that ‘to decide in favour only of the place of the event giving rise to the damage would, in an appreciable number of cases, cause confusion between the heads of jurisdiction laid down by Articles 2 [now 4] and 5 (3) [now 7(2)] of the Convention [now Regulation], so that the latter provision would, to that extent, lose its effectiveness’42 and in Lloyd’s where Article 7(5) BR was interpreted not to overlap with the forum contractii rule in Article 7(1) BR stating that ‘since Article 5(1) [now 7(1)] already allows the plaintiff to bring an action in contract in the courts for the place of performance of the obligation in question, Article 5(5) [now 7(5)] would duplicate that provision if it applied solely to undertakings entered into by a branch which were to be performed in the Contracting State in which the branch was established’.43 The third reason is that allowing an action to be brought from the establishment would oppose the basic principle whereas Article 7(5) BR as an exception to the defendant’s domicile rule in Article 4 BR must be interpreted strictly.44 The same result also follows from another basic principle whereas it must be avoided ‘so far as possible, creating a situation in which a number of courts have jurisdiction in respect of one and the same [legal matter]’45 since otherwise the risk of irreconcilable judgments would increase,46 which in turn could jeopardize predictability47 also known as the principle of avoiding forum shopping,48 any which principle has, however, not been consequently upheld in recent case law.49 The fourth reason is that there is scholarly support that an action can be only brought at, and not from, the establishment. Thus, certain scholars argue that ‘[art. 7(5) BR] only provides a forum against the owner of the establishment but not a forum actoris in his favour’50 whereas Advocates General argue that ‘… it is not the intention and purpose of [art. 7(5) BR] to lay down rules governing jurisdiction in actions brought by subsidiaries against their parent companies, but that the essential purpose is to enable third parties involved in legal relationships with undertakings which have branches or other subsidiary establishments to bring actions in the court nearest to the place in which the cause of action arose’.51 Supporting the opposite result, namely that an action can be brought from the establishment within the meaning of Article 7(5) BR, is also justified by a number of reasons: The first reason is that Article 7(5) BR is phrased in general terms since it identifies the parent company to be sued as the ‘person’ and the place to sue as where ‘the … establishment is situated’.52 None of these terms exclude that action can be brought from the establishment. Accordingly, and given the legal identity between the parent and the establishment53 the latter may also act as the plaintiff. In this regard, it is worth noting that another special jurisdiction rule namely the forum delicti rule in Article 7(2) BR, which is not worded in general terms given that it is of ‘the place where the harmful event occurred’ was nonetheless given reverse effect in Folien Fischer with the consequence that action can be brought where a harmful event has not occurred.54 The second reason is that the forum delicti rule in Article 7(2) BR, which as stated above bears a clear resemblance with Article 7(5) BR as a special jurisdiction rule, has in an online context been interpreted as a forum actoris55 where the legal justification was, inter alia, the principle of predictability56 any which principle in the way the CJEU has interpreted it57 could similarly justify a forum actoris under Article 7(5) BR. Thus, in the scenario above it may also be argued that bringing the action in Spain allows both the plaintiff easily to identify the court in which he/she may sue and the defendant reasonably to foresee before which court he/she may be sued.58 The same applies with respect to the principle of a close connection.59 Thus, in the scenario above it may also be argued that the connection between the dispute and the establishment is close in Spain given that the infringing foam shoes have been distributed from Spain. The third reason is that a strict interpretation of, inter alia, Article 7(5) BR has been softened in the current Brussels I Regulation (1215/2012) compared to the former Brussels I Regulation (44/2001). Thus, the current recital 15 reads that ‘the rules of jurisdiction should be … founded on the principle that jurisdiction is generally based on the defendant’s domicile …’ whereas the former recital 11 read that ‘the rules of jurisdiction must be … founded on the principle that jurisdiction is generally based on the defendant’s domicile …’.60 Thus, the word ‘must’ under the former Brussels I Regulation has been replaced with the word ‘should’ under the current Brussels I Regulation indicating a softening of the defendant’s domicile as the main rule. The fourth reason is that the forum contractii rule in Article 7(1) BR and the forum delicti rule in Article 7(2) BR—which both bear a clear resemblance with Article 7(5) BR as special jurisdiction rules—apply ‘both ways’ since the former covers both an obligation to pay and an obligation to deliver61 and the latter, as stated above, covers both infringement actions62 and non-infringement actions.63 In sum, a considerable number of arguments are available for and against the conclusion that an action can be brought from the establishment under Article 7(5) BR. Before balancing these arguments vis-á-vis each other, a general observation must be made. In early case law, the CJEU adhered to a rather conservative interpretation of another special jurisdiction rule—Article 7(2) BR—by not creating a forum actoris and not opening up for forum shopping cf notes 40 and 49 above. In recent case law, however, the CJEU has applied a less conservative interpretation of that rule by opening up for a forum actoris (e-Date and Iisjan) and forum shopping (Wintersteiger and Pinckney) in an online context, which in turn is congruent with recital 16 Brussels I Regulation indicating a softening of the defendant’s domicile as the main rule. Based on this development one could argue that Article 7(5) BR could also be given reverse effect in an online context given that any such interpretation would also lead to a forum actoris and more forum shopping in particular if the plaintiff had more establishments throughout the EU. Further supporting any such result is the fact that Article 7(5) BR has been worded in general terms and that, inter alia, Article 7(2) BR also applies ‘both ways’. However, despite these arguments this is probably not a likely result. One reason is that such an interpretation would oppose the very nature of Article 7(5) BR as a small defendant’s domicile rule. Another reason is that there may be a tendency in CJEU case law to limit the access to forum shopping under the forum delicti rule—which bears a clear resemblance with the establishment rule as a special jurisdiction rule—eg in Coty Prestige where the CJEU interpreted the ‘sister’ forum delicti rule in Article 125(5) EUTMR to likely cover only a place of action64 and in Ilsjan where the CJEU decided that the plaintiff can no longer sue the defendant at the place of effect.65 In conclusion, therefore, it is probably unlikely that Article 7(5) BR allows for reverse use. However, the opposite result cannot be fully excluded. 3. Conclusion It has been the purpose of this article to address whether the establishment rule in Article 7(5) BR allows for reverse use in IP litigation. If that is allowed, action cannot only be brought at the establishment but also from the establishment if the requirements are met. The result is subject to uncertainty since the CJEU has not yet ruled on the issue and since a considerable number of considerations support one or the other. Holding that an action cannot be brought from the establishment within the meaning of Article 7(5) BR is due, inter alia, to the very nature of the provision as a small defendant’s domicile rule; the fact that a forum actoris would be created; the fact that any such interpretation would overlap with other special jurisdiction rules, which the CJEU has consistently avoided in prior case law and the fact that any such interpretation would oppose the basic principle whereas Article 7(5) BR as an exception to the defendant’s domicile rule must be interpreted strictly and in a way where forum shopping is avoided. Supporting the opposite result, namely that action can be brought from the establishment within the meaning of Article 7(5) BR, is due, inter alia, to the fact that Article 7(5) BR is phrased in general terms; the fact that other special jurisdiction rules based on similar principles apply ‘both ways’ and the fact that the use of the defendant’s domicile as the main rule has been softened in both the BR and in CJEU case law in eg e-Date and recently in Ilsjan. In conclusion, and taking into account the very nature of Article 7(5) BR as a small defendant’s domicile rule and the fact that forum shopping would be created if reverse use was allowed, it is probably unlikely that Article 7(5) BR allows for reverse use. The opposite result can, however, not be fully excluded. It will be for the CJEU to decide when presented with a preliminary question. See also Torsten Bjørn Larsen, Intellectual Property Jurisdiction Strategies, Where to Litigate Unitary Rights versus National Rights in the EU (Edward Elgar Publishing 2017), Chapter 6. Footnotes 1 Torsten Bjørn Larsen, ‘The Place Where the Harmful Event Occurred in Exclusive Rights Litigation’ (Nordiskt Immateriellt Rättsskydd, 2/2016) 105 n 2. 2 The term BR covers two sets of rules. The first one is Council Regulation (EC) No 1215/2012 of 12 December 2012 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (hereinafter Brussels I Regulation), which applies if the defendant is domiciled in the EU (28 Member States). The second one is Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters signed in Lugano on 30 October 2007 (hereinafter Lugano Convention), which applies if the defendant is domiciled in the EFTA (Norway, Iceland, Switzerland and Liechtenstein). Both sets of rules must be interpreted in the same way cf Torsten Bjørn Larsen (n 1) 107, n 20 with references. 3 Torsten Bjørn Larsen, Wintersteiger v Coty Prestige—The Place of Infringement under the Forum Delicti Rule, Journal of Intellectual Property Law and Practice, 2018 re-published in Gewerblicher Rechtsschutz und Unheberrecht, Internationaler Teil, GRUR International, 2018 and Torsten Bjørn Larsen, n 1. 4 Torsten Bjørn Larsen, ‘Multiple Defendants’ in IP Litigation, Journal of Intellectual Property Law and Practice, 9/2017, 747. 5 art 7(5) BR. 6 ch II sec 2 BR and Torsten Bjørn Larsen, Intellectual Property Jurisdiction Strategies, Where to Litigate Unitary Rights vs National Rights in the EU (Edward Elgar Publishing, 2017) 114 et seq. 7 Ulrich Magnus and Peter Mankowski, ‘European Commentaries on Private International Law’, Brussels I Regulation (2nd Revised Edition, Sellier European Law Publishers, 2012) 105. 8 Case 33/78, Somafer SA v Saar-Ferngas AG, ECLI:EU:C:1978:205, para 7 cf Oberlandesgericht (OLG) Köln, IHR 2005, 167, 168 and Report on the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters signed at Brussels 27 September 1968 by P Jenard, Director in the Belgium Ministry of Foreign Affairs and External Trade (Jenard Report), 22. 9 Case C-281/02, Andrew Owusu v NB Jackson, trading as ‘Villa Holidays Bal-Inn Villas’ and Others, ECLI:EU:C:2005:120, paras 37–43 cf Annette Kur and Thomas Dreier, European Intellectual Property Law, Text, Cases and Materials (Edward Elgar Publishing, 2013) 488 et seq. and Magnus and Mankowski n 7, 112. 10 Recital 16 Brussels I Regulation cf Case 33/78 (n 8) paras 7 and 8; Case 218/86, SAR Schotte GmbH v Parfums Rothschild SARL, ECLI:EU:C:1987:536, para 9 and Case C-439/93 ( n 10) para 21. 11 Emphasis added. 12 See n 7, 277; Marta Pertegás Sender, Cross-Border Enforcement of Patent Rights, Oxford Private International Law Series, 2002 at 3.06 and Conflict of Laws in Intellectual Property, The CLIP Principles and Commentary, European Max Planck Group on Conflicts of Laws in Intellectual Property, Oxford University Press, 2013, p. 120 (2:207.C01 and 2:207.N01). 13 Anton Durbeck GmbH v Den Norske Bank ASA [2003] 2 WLR 1296, 1309, United Kingdom Court of Appeal per Lord Philips of Worth Matravers M.R cf. see n 7, 277. 14 art 7(first sentence) BR. 15 Case 14/76, De Bloos, SPRL v Société en Commandite Par Actions Bouyer, ECLI:EU:C:1976:134, para 21 and Report on the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters done at Lugano on 16 September 1988 by Mr P Jenard and Mr G Möller 90/C 189/07 (Jenard and Möller Report) 43. 16 Case 33/78, (n 8) para 8 and Magnus and Mankowski n 7, 278, n 1672 with references. 17 See n 7, 279. 18 ibid., 278; James J Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, Oxford Private International Law Series, 2011) 5.113. 19 Case 33/78 (n 8) para 12; Case 139/80, Blanckaert and Willems PVBA v Luise Trost, ECLI:EU:C:1981:70, para 11; Case 218/86 (n 10) para 10; Case C-439/93 (n 10) para 18 cf Magnus and Mankowski, n 7, 278; Fawcett and Torremans (n 18) 5.111; Sender (n 12) 3.58 and Conflict of Laws in Intellectual Property, The CLIP Principles and Commentary, European Max Planck Group on Conflicts of Laws in Intellectual Property (OUP 2013) 120 (2:207.C02). 20 Recital 16 Brussels I Regulation. 21 Joined Cases C-509/09 and C-161/10, e-Date Advertising GmbH and Others v X and Société MGN Limited, ECLI:EU:C:2011:685, para 51; Case C523/10, Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, ECLI:EU:C:2012:220, paras 27–29 and case C170/12, Peter Pinckney v KDG Mediatech AG, ECLI:EU:C:2013:635, paras 43–44. 22 Case 194/16, Bolagsupplysningen OÜ and Ingrid Ilsjan v Svensk Handel AB, ECLI:EU:C:2017:766, paras 45–49 and Michael Bogdan, Domsrätt Över Personlighetskränkningar på Internet, JT net, 2017-2018. 23 Larsen (n 6) 117 with references. 24 Fawcett and Torremans (n 18) 5.112. 25 See n 18. 26 Fawcett and Torremans (n 18) 5.112. 27 Case C-133/11, Folien Fischer AG, Fofitec AG v Ritrama SpA, ECLI:EU:C:2012:664, para 56. 28 With respect to art 7(2) BR see, inter alia, Case C523/10, (n 21); Case C170/12 (n 21); Case C-387/12, Hi Hotel HCF SARL v Uwe Spoering, ECLI:EU:C:2014:215 and Case C-441/13, Pez Hejduk v EnergieAgentur NRW GmbH, ECLI:EU:C:2015:28. 29 Magnus and Mankowski (n 7) 277; Fawcett and Torremans (n 18) 5.114; Sender (n 12) 3.61, Conflict of Laws in Intellectual Property, The CLIP Principles and Commentary, European Max Planck Group on Conflicts of Laws in Intellectual Property (OUP 2013) 120 (2:207.C03) and IBS Technologies (PVT) Ltd. v APM Technologies SA, unreported, 7 April 2003 [2003] All ER (D) 105, 61. For a different view see Toshiyuki Kono, Intellectual Property and Private International Law, Comparative Perspectives (Hart Publishing 2012), 25. 30 Alexander Peukert, ‘Territoriality and Extraterritoriality in Intellectual Property Law’, Beyond Territoriality: Transnational Legal Authority in an Age of Globalization, Gunther Handl and Joachim Zekoll (eds), Queen Mary Studies in International Law (Brill Academic Publishing 2012) 189 and Greaeme Dinwoodie, ‘Developing a Private International Intellectual Property Law: The Demise of Territoriality’ (2009) 51, William and Mary Law Review 713. 31 Sender (n 12) 3.115. 32 Magnus and Mankowski (n 7) 246. 33 Conflict of Laws in Intellectual Property, ‘The CLIP Principles and Commentary, European Max Planck Group on Conflicts of Laws in Intellectual Property’ (OUP 2013) 56 (2:101.C01) and 85 (2:203.C03) and Toshiyuki Kono, Studies in Private International Law, Intellectual Property and Private International Law, Comparative Perspectives (Hart Publishing 2012) 23. 34 Annette Kur, Case C-235/09, DHL Express v Chronopost, Judgment of the Court of Justice (Grand Chamber) of 12 April 2011, 2 Common Market Law Review 753–766, 753 (n 2). 35 Case C-68/93, Fiona Shevill, Ixora Trading Inc, Chequepoint SARL and Chequepoint International Ltd v Presse Alliance SA (ECLI:EU:C:1995:61), paras 25 and 30. 36 Larsen (n 6) Ch 9, sec B.1.a.ii ‘Principle 8: Unlimited Full Jurisdiction and Limited Forum Jurisdiction.’ 37 See n 14. 38 See within the meaning of art 7(2) BR Joined Cases C-509/09 (n 21) para 48 and Case 194/16 (n 22) para 50. 39 See within the meaning of art 7(2) BR case C-51/97, Réunion Européenne SA and Others v Spliethoff's Bevrachtingskantoor BV and the Master of the vessel Alblasgracht V002, ECLI:EU:C:1998:509, para 34; Case C-220/88, Dumez France SA and Tracoba SARL v Hessische Landesbank and others, ECLI:EU:C:1990:8, para 16–22; Case C-364/93, Antonio Marinari v Lloyds Bank plc and Zubaidi Trading Company, ECLI:EU:C:1995:289, para 21; Case C-168/02, Rudolf Kronhofer v Marianne Maier and others, ECLI:EU:C:2004:364, paras 20–21; Explanatory Report on the Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters, signed in Lugano on 30 October 2007 by Professor Fausto Pocar (Pocar Report) 59 and Magnus and Mankowski (n 7) 254. 40 See n 30. 41 Magnus and Mankowski (n 7) 286 and Sender (n 12) 3.60. 42 Case C-21/76, Handelskwekerij G. J. Bier BV v Mines de potasse d'Alsace SA, ECLI:EU:C:1976:166, para 20. 43 Case C-439/93 (n 10) para 17. 44 Case 33/78 (n 8) para 7. 45 Case 14/76 (n 15):120, para 9; Case C-220/88 (n 39) para 18; Case C-125/92, Mulox IBC Ltd v Hendrick Geels, ECLI:EU:C:1993:306, para 21 cf. opinion of Advocate General Darmon (first opinion) in Case C-68/93, Fiona Shevill, Ixora Trading Inc., Chequepoint SARL and Chequepoint International Ltd v Presse Alliance SA, ECLI:EU:C:1994:303, para 57 and Jannet A Pontier and Edwige Burg, ‘EU Principles on Jurisdiction and Recognition and Enforcement of Judgments in Civil and Commercial Matters according to the Case Law of the European Court of Justice’ (TMC Asser Press 2004) 98. 46 Case C-220/88 (n 39) para 18. 47 Case C-256/00, Besix SA v Wasserreinigungsbau Alfred Kretzschmar GmbH & Co. KG (WABAG) and Planungs- und Forschungsgesellschaft Dipl Ing W. Kretzschmar GmbH & KG (Plafog), ECLI:EU:C:2002:99, paras 24–26. 48 Larsen (n 6) ch 4(C)(3). 49 ibid, 9.21 et seq. 50 Magnus and Mankowski (n 7) 277. 51 Opinion of Advocate General Reischl in Case 139/80, Blanckaert and Willems PVBA v Luise Trost, ECLI:EU:C:1981:37, 838 cf opinion of Advocate General Reischl in Case 14/76 (n 15):120, 1519. 52 See n 6. 53 Magnus and Mankowski (n 7) 278 and Fawcett and Torremans (n 18) 5.113. 54 Case C-133/11 (n 27) paras 42–44 and 56. 55 Joined Cases C-509/09 (n 21) para 52 and Case 194/16 (n 22) para 32 et seq. 56 Joined Cases C-509/09, ibid, para 50. 57 Case C-18/02, Danmarks Rederiforening, acting on behalf of DFDS Torline A/S v LO Landsorganisationen i Sverige, acting on behalf of SEKO Sjöfolk Facket för Service och Kommunikation, ECLI:EU:C:2004:74, para 36; Case C-168/02 (n 39) para 20; Joined Cases C-509/09 (n 21) para 50 and case C-327/10, Hypoteční banka as v Mike Lindner, ECLI:EU:C:2011:745, para 44. 58 ibid. 59 See n 11. 60 Emphasis added. 61 Case 14/76 (n 15):120, paras 9–13. 62 Case C-523/10, (n 21) para 20. 63 Case C-133/11 (n 27) para 56. 64 Case C-360/12, Coty Prestige Lancaster Group GmbH v First Note Perfumes NV, ECLI:EU:C:2014:1318, para 37 and See n 3. 65 Case 194/16 (n 22) para 49. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model) http://www.deepdyve.com/assets/images/DeepDyve-Logo-lg.png Journal of Intellectual Property Law & Practice Oxford University Press

Reverse use of Article 7(5) Brussels Regime in IP litigation: can you sue from the establishment?

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Abstract

This author Torsten Bjørn Larsen LLM PhD is Associate Professor at Aalborg University, Denmark. This article It is the purpose of this article to address whether the establishment rule in art 7(5) BR allows for reverse use in IP litigation. If that is allowed, action cannot only be brought at the establishment but also from the establishment. The result is subject to uncertainty since the Court of Justice of the European Union has not yet ruled on the issue and, since a considerable number of considerations speak both for and against, it is probably unlikely that action can be brought from the establishment. However, the opposite result cannot be fully excluded. 1. Introduction In Intellectual property (IP) litigation quite a few jurisdiction rules are available to the plaintiff. One of these—it being the more frequently used jurisdiction rule in IP litigation1—is the forum delicti rule in Article 7(2) Brussels Regime (BR)2, which I have previously addressed in IP litigation in this journal.3 Another one is the multiple defendants’ rule in Article 8(1) BR, which I have also previously addressed in IP litigation in this journal.4 Now the time has come to address certain aspects of a third and often overlooked rule in IP litigation, namely the so-called establishment rule or branch rule in Article 7(5) BR. The rule reads as follows: A person domiciled in a Member State may be sued in another Member State [ … ] as regards a dispute arising out of the operations of a branch, agency or other establishment, in the courts for the place where the branch, agency or other establishment is situated.5 Article 7(5) BR is a special jurisdiction rule.6 The rule supplements the defendant’s domicile rule in Article 4 BR.7 This means that the plaintiff may choose between the two8 along with, inter alia, the forum delicti rule in Article 7(2) BR and the multiple defendants’ rule in Article 8(1) BR, without being restricted through the doctrine of forum non-conveniens.9 The close connection principle, which is the overall justification for the rule10 and which follows from the provision itself given that it reads ‘as regards disputes arising out of the operations of the branch, agency or other establishment’11 is that the defendant has established a branch, agency or other establishment for the purpose of doing business being the place where he/she seeks an advantage and where he/she may feel the consequences of being sued.12 Thus, Article 7(5) BR is, lacking case law from the Court of Justice of the European Union (CJEU), a small defendant’s domicile rule.13 Article 7(5) BR applies when two cumulative requirements are met: First, the defendant must have a branch, agency or other establishment in an EU/EFTA Member State different from where he/she is domiciled.14 ‘Branch, agency or other establishment’, where the former two are merely illustrations of the latter15 and are thus hereinafter referred to as ‘establishment’, is defined autonomously16 and requires, inter alia, that: (i) the establishment engages in external business activity17; (ii) the establishment is subject to the direction and control of the parent18; and (iii) the establishment acts on behalf of and binds the parent.19 Secondly, the dispute must arise out of the operation of the establishment. Even though a more distant connection suffices under other special jurisdiction rules, which similar to Article 7(5) BR are based on a close connection20 namely the forum delicti rule in Article 7(2) BR as interpreted in e-Date, Wintersteiger and Pinckney,21 however, as modified in Iisjan,22 it seems likely that the connection between the dispute and the establishment must be close under Article 7(5) BR.23 In an IP context, distributing infringing products from an establishment meets the requirement of a close connection24 whereas an establishment merely being the registered owner of an IP right does most likely not, which in turn is confirmed by the lack of external business activity in any such situation.25 Based on the above the traditional scope of Article 7(5) BR in IP litigation has been to allow a plaintiff to sue the defendant at its establishment provided that the above requirements are met.26 Given the lack of CJEU case law, however, a relevant question could be whether Article 7(5) BR is limited to actions brought at the establishment or whether Article 7(5) BR also allow actions to be brought from the establishment. In other words, the question is whether reverse use is allowed under Article 7(5) BR. The following scenario may illustrate this: A company, Frogs GmbH, is a foam shoe manufacturer based in Munich/Germany. Frogs GmbH has an establishment in Copenhagen/Denmark being the registered owner of Frogs GmbH’s IP rights. Frogs GmbH markets and sells foam shoes in the European Union. Another company, Frox SpA, based in Rome/Italy with an establishment in Madrid/Spain has started selling knock-offs in the EU from its establishment in Spain. Focusing on the application of Article 7(5) BR in IP litigation Frogs GmbH cannot sue Frox SpA for infringement from its establishment in Copenhagen/Denmark because the establishment is not engaged in external business activity (cf note 18). However, the question, which is subject to the discussion in the present article, is whether Frox SpA under Article 7(5) BR could sue Frogs GmbH for non-infringement from it establishment in Spain taking into account that the knock-offs are sold from Spain. One could argue that the scenario presented above merely raises theoretical discussions given that a non-infringement action can already be brought under Article 7(2) BR following Folien Fischer.27 That is obviously true, but that does not make the discussion theoretical. Allowing the plaintiff to sue from the establishment would namely differenciate Article 7(5) BR from the forum delicti rule in Article 7(2) BR despite allowing action to be brought at what equals the plaintiff’s home domicile under both.28 The reason is that the former—Article 7(5) BR—would likely have unrestricted jurisdiction29 also known as, inter alia, extraterritorial jurisdiction,30 cross-border jurisdiction,31 global jurisdiction,32 general jurisdiction,33 central jurisdiction34 or EU-wide jurisdiction allowing the competent court to hear a claim for (non)-infringement irrespectively of where the (non)-infringement occurred whereas the latter—Article 7(2) BR—most likely has restricted jurisdiction also known as territorial jurisdiction allowing the competent court to hear a claim for (non)-infringement, which occurred in the Member State where the court is located and nowhere else. Restricted jurisdiction most likely applies to both heads of jurisdiction under Article 7(2) BR in IP litigation ie at both the place of action (‘the place giving rise to the damage’) and at the place of effect (‘the place where the damage occurred’). The reason is that the so-called mosaic rule, which applies to personality rights35 can most likely not be transferred to IP rights. This question is particular complicated and I have addressed it previously.36 This article is based on the explicit assumption that Article 7(2) BR courts have restricted jurisdiction since otherwise Article 7(5) BR would not differentiate itself from Article 7(2) BR and there would be little ratio for the legal discussion in Section 2. The present article is structured so that possible reverse use of Article 7(5) BR is addressed in Section 2 whereas a conclusion is drawn in Section 3. 2. Possible reverse use of Article 7(5) BR In order to address whether Article 7(5) BR allows for reverse use a considerable number of considerations must be taken into account. For structural reasons the arguments, which support that action cannot be brought from the establishment are addressed first whereas the arguments, which support that action can be brought from the establishment are addressed second. Finally, the arguments are balanced vis-á-vis each other. Supporting that action cannot be brought from the establishment within the meaning of Article 7(5) BR speak a number of reasons: The first reason, which is fundamental, is that allowing action to be brought from the establishment would oppose the very nature of the provision as a small defendant’s domicile rule37 given that in effect a plaintiff’s home domicile rule also known as a forum actoris would be created, which is often, but not always,38 met with hostility by the CJEU39 provided that, which is likely, the provision is subject to unrestricted jurisdiction.40 The second reason is that allowing action to be brought from the establishment, Article 7(5) BR would to some extent overlap with the forum delicti rule in Article 7(2) BR41 in the scenario presented. The reason is that action can be brought at what equals a forum actoris under both. The CJEU has consistently avoided overlapping interpretations in prior case law eg in Bier where Article 7(2) BR was interpreted not to overlap with the defendant’s domicile rule in Article 4 BR stating that ‘to decide in favour only of the place of the event giving rise to the damage would, in an appreciable number of cases, cause confusion between the heads of jurisdiction laid down by Articles 2 [now 4] and 5 (3) [now 7(2)] of the Convention [now Regulation], so that the latter provision would, to that extent, lose its effectiveness’42 and in Lloyd’s where Article 7(5) BR was interpreted not to overlap with the forum contractii rule in Article 7(1) BR stating that ‘since Article 5(1) [now 7(1)] already allows the plaintiff to bring an action in contract in the courts for the place of performance of the obligation in question, Article 5(5) [now 7(5)] would duplicate that provision if it applied solely to undertakings entered into by a branch which were to be performed in the Contracting State in which the branch was established’.43 The third reason is that allowing an action to be brought from the establishment would oppose the basic principle whereas Article 7(5) BR as an exception to the defendant’s domicile rule in Article 4 BR must be interpreted strictly.44 The same result also follows from another basic principle whereas it must be avoided ‘so far as possible, creating a situation in which a number of courts have jurisdiction in respect of one and the same [legal matter]’45 since otherwise the risk of irreconcilable judgments would increase,46 which in turn could jeopardize predictability47 also known as the principle of avoiding forum shopping,48 any which principle has, however, not been consequently upheld in recent case law.49 The fourth reason is that there is scholarly support that an action can be only brought at, and not from, the establishment. Thus, certain scholars argue that ‘[art. 7(5) BR] only provides a forum against the owner of the establishment but not a forum actoris in his favour’50 whereas Advocates General argue that ‘… it is not the intention and purpose of [art. 7(5) BR] to lay down rules governing jurisdiction in actions brought by subsidiaries against their parent companies, but that the essential purpose is to enable third parties involved in legal relationships with undertakings which have branches or other subsidiary establishments to bring actions in the court nearest to the place in which the cause of action arose’.51 Supporting the opposite result, namely that an action can be brought from the establishment within the meaning of Article 7(5) BR, is also justified by a number of reasons: The first reason is that Article 7(5) BR is phrased in general terms since it identifies the parent company to be sued as the ‘person’ and the place to sue as where ‘the … establishment is situated’.52 None of these terms exclude that action can be brought from the establishment. Accordingly, and given the legal identity between the parent and the establishment53 the latter may also act as the plaintiff. In this regard, it is worth noting that another special jurisdiction rule namely the forum delicti rule in Article 7(2) BR, which is not worded in general terms given that it is of ‘the place where the harmful event occurred’ was nonetheless given reverse effect in Folien Fischer with the consequence that action can be brought where a harmful event has not occurred.54 The second reason is that the forum delicti rule in Article 7(2) BR, which as stated above bears a clear resemblance with Article 7(5) BR as a special jurisdiction rule, has in an online context been interpreted as a forum actoris55 where the legal justification was, inter alia, the principle of predictability56 any which principle in the way the CJEU has interpreted it57 could similarly justify a forum actoris under Article 7(5) BR. Thus, in the scenario above it may also be argued that bringing the action in Spain allows both the plaintiff easily to identify the court in which he/she may sue and the defendant reasonably to foresee before which court he/she may be sued.58 The same applies with respect to the principle of a close connection.59 Thus, in the scenario above it may also be argued that the connection between the dispute and the establishment is close in Spain given that the infringing foam shoes have been distributed from Spain. The third reason is that a strict interpretation of, inter alia, Article 7(5) BR has been softened in the current Brussels I Regulation (1215/2012) compared to the former Brussels I Regulation (44/2001). Thus, the current recital 15 reads that ‘the rules of jurisdiction should be … founded on the principle that jurisdiction is generally based on the defendant’s domicile …’ whereas the former recital 11 read that ‘the rules of jurisdiction must be … founded on the principle that jurisdiction is generally based on the defendant’s domicile …’.60 Thus, the word ‘must’ under the former Brussels I Regulation has been replaced with the word ‘should’ under the current Brussels I Regulation indicating a softening of the defendant’s domicile as the main rule. The fourth reason is that the forum contractii rule in Article 7(1) BR and the forum delicti rule in Article 7(2) BR—which both bear a clear resemblance with Article 7(5) BR as special jurisdiction rules—apply ‘both ways’ since the former covers both an obligation to pay and an obligation to deliver61 and the latter, as stated above, covers both infringement actions62 and non-infringement actions.63 In sum, a considerable number of arguments are available for and against the conclusion that an action can be brought from the establishment under Article 7(5) BR. Before balancing these arguments vis-á-vis each other, a general observation must be made. In early case law, the CJEU adhered to a rather conservative interpretation of another special jurisdiction rule—Article 7(2) BR—by not creating a forum actoris and not opening up for forum shopping cf notes 40 and 49 above. In recent case law, however, the CJEU has applied a less conservative interpretation of that rule by opening up for a forum actoris (e-Date and Iisjan) and forum shopping (Wintersteiger and Pinckney) in an online context, which in turn is congruent with recital 16 Brussels I Regulation indicating a softening of the defendant’s domicile as the main rule. Based on this development one could argue that Article 7(5) BR could also be given reverse effect in an online context given that any such interpretation would also lead to a forum actoris and more forum shopping in particular if the plaintiff had more establishments throughout the EU. Further supporting any such result is the fact that Article 7(5) BR has been worded in general terms and that, inter alia, Article 7(2) BR also applies ‘both ways’. However, despite these arguments this is probably not a likely result. One reason is that such an interpretation would oppose the very nature of Article 7(5) BR as a small defendant’s domicile rule. Another reason is that there may be a tendency in CJEU case law to limit the access to forum shopping under the forum delicti rule—which bears a clear resemblance with the establishment rule as a special jurisdiction rule—eg in Coty Prestige where the CJEU interpreted the ‘sister’ forum delicti rule in Article 125(5) EUTMR to likely cover only a place of action64 and in Ilsjan where the CJEU decided that the plaintiff can no longer sue the defendant at the place of effect.65 In conclusion, therefore, it is probably unlikely that Article 7(5) BR allows for reverse use. However, the opposite result cannot be fully excluded. 3. Conclusion It has been the purpose of this article to address whether the establishment rule in Article 7(5) BR allows for reverse use in IP litigation. If that is allowed, action cannot only be brought at the establishment but also from the establishment if the requirements are met. The result is subject to uncertainty since the CJEU has not yet ruled on the issue and since a considerable number of considerations support one or the other. Holding that an action cannot be brought from the establishment within the meaning of Article 7(5) BR is due, inter alia, to the very nature of the provision as a small defendant’s domicile rule; the fact that a forum actoris would be created; the fact that any such interpretation would overlap with other special jurisdiction rules, which the CJEU has consistently avoided in prior case law and the fact that any such interpretation would oppose the basic principle whereas Article 7(5) BR as an exception to the defendant’s domicile rule must be interpreted strictly and in a way where forum shopping is avoided. Supporting the opposite result, namely that action can be brought from the establishment within the meaning of Article 7(5) BR, is due, inter alia, to the fact that Article 7(5) BR is phrased in general terms; the fact that other special jurisdiction rules based on similar principles apply ‘both ways’ and the fact that the use of the defendant’s domicile as the main rule has been softened in both the BR and in CJEU case law in eg e-Date and recently in Ilsjan. In conclusion, and taking into account the very nature of Article 7(5) BR as a small defendant’s domicile rule and the fact that forum shopping would be created if reverse use was allowed, it is probably unlikely that Article 7(5) BR allows for reverse use. The opposite result can, however, not be fully excluded. It will be for the CJEU to decide when presented with a preliminary question. See also Torsten Bjørn Larsen, Intellectual Property Jurisdiction Strategies, Where to Litigate Unitary Rights versus National Rights in the EU (Edward Elgar Publishing 2017), Chapter 6. Footnotes 1 Torsten Bjørn Larsen, ‘The Place Where the Harmful Event Occurred in Exclusive Rights Litigation’ (Nordiskt Immateriellt Rättsskydd, 2/2016) 105 n 2. 2 The term BR covers two sets of rules. The first one is Council Regulation (EC) No 1215/2012 of 12 December 2012 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (hereinafter Brussels I Regulation), which applies if the defendant is domiciled in the EU (28 Member States). The second one is Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters signed in Lugano on 30 October 2007 (hereinafter Lugano Convention), which applies if the defendant is domiciled in the EFTA (Norway, Iceland, Switzerland and Liechtenstein). Both sets of rules must be interpreted in the same way cf Torsten Bjørn Larsen (n 1) 107, n 20 with references. 3 Torsten Bjørn Larsen, Wintersteiger v Coty Prestige—The Place of Infringement under the Forum Delicti Rule, Journal of Intellectual Property Law and Practice, 2018 re-published in Gewerblicher Rechtsschutz und Unheberrecht, Internationaler Teil, GRUR International, 2018 and Torsten Bjørn Larsen, n 1. 4 Torsten Bjørn Larsen, ‘Multiple Defendants’ in IP Litigation, Journal of Intellectual Property Law and Practice, 9/2017, 747. 5 art 7(5) BR. 6 ch II sec 2 BR and Torsten Bjørn Larsen, Intellectual Property Jurisdiction Strategies, Where to Litigate Unitary Rights vs National Rights in the EU (Edward Elgar Publishing, 2017) 114 et seq. 7 Ulrich Magnus and Peter Mankowski, ‘European Commentaries on Private International Law’, Brussels I Regulation (2nd Revised Edition, Sellier European Law Publishers, 2012) 105. 8 Case 33/78, Somafer SA v Saar-Ferngas AG, ECLI:EU:C:1978:205, para 7 cf Oberlandesgericht (OLG) Köln, IHR 2005, 167, 168 and Report on the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters signed at Brussels 27 September 1968 by P Jenard, Director in the Belgium Ministry of Foreign Affairs and External Trade (Jenard Report), 22. 9 Case C-281/02, Andrew Owusu v NB Jackson, trading as ‘Villa Holidays Bal-Inn Villas’ and Others, ECLI:EU:C:2005:120, paras 37–43 cf Annette Kur and Thomas Dreier, European Intellectual Property Law, Text, Cases and Materials (Edward Elgar Publishing, 2013) 488 et seq. and Magnus and Mankowski n 7, 112. 10 Recital 16 Brussels I Regulation cf Case 33/78 (n 8) paras 7 and 8; Case 218/86, SAR Schotte GmbH v Parfums Rothschild SARL, ECLI:EU:C:1987:536, para 9 and Case C-439/93 ( n 10) para 21. 11 Emphasis added. 12 See n 7, 277; Marta Pertegás Sender, Cross-Border Enforcement of Patent Rights, Oxford Private International Law Series, 2002 at 3.06 and Conflict of Laws in Intellectual Property, The CLIP Principles and Commentary, European Max Planck Group on Conflicts of Laws in Intellectual Property, Oxford University Press, 2013, p. 120 (2:207.C01 and 2:207.N01). 13 Anton Durbeck GmbH v Den Norske Bank ASA [2003] 2 WLR 1296, 1309, United Kingdom Court of Appeal per Lord Philips of Worth Matravers M.R cf. see n 7, 277. 14 art 7(first sentence) BR. 15 Case 14/76, De Bloos, SPRL v Société en Commandite Par Actions Bouyer, ECLI:EU:C:1976:134, para 21 and Report on the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters done at Lugano on 16 September 1988 by Mr P Jenard and Mr G Möller 90/C 189/07 (Jenard and Möller Report) 43. 16 Case 33/78, (n 8) para 8 and Magnus and Mankowski n 7, 278, n 1672 with references. 17 See n 7, 279. 18 ibid., 278; James J Fawcett and Paul Torremans, Intellectual Property and Private International Law (2nd edn, Oxford Private International Law Series, 2011) 5.113. 19 Case 33/78 (n 8) para 12; Case 139/80, Blanckaert and Willems PVBA v Luise Trost, ECLI:EU:C:1981:70, para 11; Case 218/86 (n 10) para 10; Case C-439/93 (n 10) para 18 cf Magnus and Mankowski, n 7, 278; Fawcett and Torremans (n 18) 5.111; Sender (n 12) 3.58 and Conflict of Laws in Intellectual Property, The CLIP Principles and Commentary, European Max Planck Group on Conflicts of Laws in Intellectual Property (OUP 2013) 120 (2:207.C02). 20 Recital 16 Brussels I Regulation. 21 Joined Cases C-509/09 and C-161/10, e-Date Advertising GmbH and Others v X and Société MGN Limited, ECLI:EU:C:2011:685, para 51; Case C523/10, Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, ECLI:EU:C:2012:220, paras 27–29 and case C170/12, Peter Pinckney v KDG Mediatech AG, ECLI:EU:C:2013:635, paras 43–44. 22 Case 194/16, Bolagsupplysningen OÜ and Ingrid Ilsjan v Svensk Handel AB, ECLI:EU:C:2017:766, paras 45–49 and Michael Bogdan, Domsrätt Över Personlighetskränkningar på Internet, JT net, 2017-2018. 23 Larsen (n 6) 117 with references. 24 Fawcett and Torremans (n 18) 5.112. 25 See n 18. 26 Fawcett and Torremans (n 18) 5.112. 27 Case C-133/11, Folien Fischer AG, Fofitec AG v Ritrama SpA, ECLI:EU:C:2012:664, para 56. 28 With respect to art 7(2) BR see, inter alia, Case C523/10, (n 21); Case C170/12 (n 21); Case C-387/12, Hi Hotel HCF SARL v Uwe Spoering, ECLI:EU:C:2014:215 and Case C-441/13, Pez Hejduk v EnergieAgentur NRW GmbH, ECLI:EU:C:2015:28. 29 Magnus and Mankowski (n 7) 277; Fawcett and Torremans (n 18) 5.114; Sender (n 12) 3.61, Conflict of Laws in Intellectual Property, The CLIP Principles and Commentary, European Max Planck Group on Conflicts of Laws in Intellectual Property (OUP 2013) 120 (2:207.C03) and IBS Technologies (PVT) Ltd. v APM Technologies SA, unreported, 7 April 2003 [2003] All ER (D) 105, 61. For a different view see Toshiyuki Kono, Intellectual Property and Private International Law, Comparative Perspectives (Hart Publishing 2012), 25. 30 Alexander Peukert, ‘Territoriality and Extraterritoriality in Intellectual Property Law’, Beyond Territoriality: Transnational Legal Authority in an Age of Globalization, Gunther Handl and Joachim Zekoll (eds), Queen Mary Studies in International Law (Brill Academic Publishing 2012) 189 and Greaeme Dinwoodie, ‘Developing a Private International Intellectual Property Law: The Demise of Territoriality’ (2009) 51, William and Mary Law Review 713. 31 Sender (n 12) 3.115. 32 Magnus and Mankowski (n 7) 246. 33 Conflict of Laws in Intellectual Property, ‘The CLIP Principles and Commentary, European Max Planck Group on Conflicts of Laws in Intellectual Property’ (OUP 2013) 56 (2:101.C01) and 85 (2:203.C03) and Toshiyuki Kono, Studies in Private International Law, Intellectual Property and Private International Law, Comparative Perspectives (Hart Publishing 2012) 23. 34 Annette Kur, Case C-235/09, DHL Express v Chronopost, Judgment of the Court of Justice (Grand Chamber) of 12 April 2011, 2 Common Market Law Review 753–766, 753 (n 2). 35 Case C-68/93, Fiona Shevill, Ixora Trading Inc, Chequepoint SARL and Chequepoint International Ltd v Presse Alliance SA (ECLI:EU:C:1995:61), paras 25 and 30. 36 Larsen (n 6) Ch 9, sec B.1.a.ii ‘Principle 8: Unlimited Full Jurisdiction and Limited Forum Jurisdiction.’ 37 See n 14. 38 See within the meaning of art 7(2) BR Joined Cases C-509/09 (n 21) para 48 and Case 194/16 (n 22) para 50. 39 See within the meaning of art 7(2) BR case C-51/97, Réunion Européenne SA and Others v Spliethoff's Bevrachtingskantoor BV and the Master of the vessel Alblasgracht V002, ECLI:EU:C:1998:509, para 34; Case C-220/88, Dumez France SA and Tracoba SARL v Hessische Landesbank and others, ECLI:EU:C:1990:8, para 16–22; Case C-364/93, Antonio Marinari v Lloyds Bank plc and Zubaidi Trading Company, ECLI:EU:C:1995:289, para 21; Case C-168/02, Rudolf Kronhofer v Marianne Maier and others, ECLI:EU:C:2004:364, paras 20–21; Explanatory Report on the Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters, signed in Lugano on 30 October 2007 by Professor Fausto Pocar (Pocar Report) 59 and Magnus and Mankowski (n 7) 254. 40 See n 30. 41 Magnus and Mankowski (n 7) 286 and Sender (n 12) 3.60. 42 Case C-21/76, Handelskwekerij G. J. Bier BV v Mines de potasse d'Alsace SA, ECLI:EU:C:1976:166, para 20. 43 Case C-439/93 (n 10) para 17. 44 Case 33/78 (n 8) para 7. 45 Case 14/76 (n 15):120, para 9; Case C-220/88 (n 39) para 18; Case C-125/92, Mulox IBC Ltd v Hendrick Geels, ECLI:EU:C:1993:306, para 21 cf. opinion of Advocate General Darmon (first opinion) in Case C-68/93, Fiona Shevill, Ixora Trading Inc., Chequepoint SARL and Chequepoint International Ltd v Presse Alliance SA, ECLI:EU:C:1994:303, para 57 and Jannet A Pontier and Edwige Burg, ‘EU Principles on Jurisdiction and Recognition and Enforcement of Judgments in Civil and Commercial Matters according to the Case Law of the European Court of Justice’ (TMC Asser Press 2004) 98. 46 Case C-220/88 (n 39) para 18. 47 Case C-256/00, Besix SA v Wasserreinigungsbau Alfred Kretzschmar GmbH & Co. KG (WABAG) and Planungs- und Forschungsgesellschaft Dipl Ing W. Kretzschmar GmbH & KG (Plafog), ECLI:EU:C:2002:99, paras 24–26. 48 Larsen (n 6) ch 4(C)(3). 49 ibid, 9.21 et seq. 50 Magnus and Mankowski (n 7) 277. 51 Opinion of Advocate General Reischl in Case 139/80, Blanckaert and Willems PVBA v Luise Trost, ECLI:EU:C:1981:37, 838 cf opinion of Advocate General Reischl in Case 14/76 (n 15):120, 1519. 52 See n 6. 53 Magnus and Mankowski (n 7) 278 and Fawcett and Torremans (n 18) 5.113. 54 Case C-133/11 (n 27) paras 42–44 and 56. 55 Joined Cases C-509/09 (n 21) para 52 and Case 194/16 (n 22) para 32 et seq. 56 Joined Cases C-509/09, ibid, para 50. 57 Case C-18/02, Danmarks Rederiforening, acting on behalf of DFDS Torline A/S v LO Landsorganisationen i Sverige, acting on behalf of SEKO Sjöfolk Facket för Service och Kommunikation, ECLI:EU:C:2004:74, para 36; Case C-168/02 (n 39) para 20; Joined Cases C-509/09 (n 21) para 50 and case C-327/10, Hypoteční banka as v Mike Lindner, ECLI:EU:C:2011:745, para 44. 58 ibid. 59 See n 11. 60 Emphasis added. 61 Case 14/76 (n 15):120, paras 9–13. 62 Case C-523/10, (n 21) para 20. 63 Case C-133/11 (n 27) para 56. 64 Case C-360/12, Coty Prestige Lancaster Group GmbH v First Note Perfumes NV, ECLI:EU:C:2014:1318, para 37 and See n 3. 65 Case 194/16 (n 22) para 49. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model)

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Journal of Intellectual Property Law & Practice – Oxford University Press

Published: Oct 1, 2018

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