The Adoption of Provisional Measures in Cross-border IP Disputes in the Framework of the Brussels I Regulation
The ability and promptness of attorneys to obtain provisional measures before or during a lawsuit involving Intellectual Property rights is of great relevance. Even more when the dispute has a cross-border dimension, something that is becoming very common due to the globalization of business activities.
In Europe, in order to determine before which courts such provisional measures can be asked for we must consult Regulation 1215/2012 (Brussels I Regulation). The new text of the Regulation (in force since January 2015) shows a simple but important amendment is relation to the previous text (Regulation 44/2001).
The Regulation establishes a “double-alternative system”. A litigant can ask for provisional measures either before or after the principal complaint has been filed:
a. Either before the courts with jurisdiction on the merits – for IPR infringement actions, those are the courts of the Member States where the defendant is domiciled (art. 4), or the courts where the infringement occurred or may occur (art. 7.2)
b. or before the courts of any other Member State as far as they can declare jurisdiction in accordance with their domestic rules on jurisdiction (art. 35 and CJEU Judgment 17 November 1998, C-391/95, “Van Uden”)
When the previous version of the Regulation (Regulation 44/2001) was still in force, this “double-alternative system” gave IPR holders a big variety of alternatives to ask for provisional measures. Theoretically, apart from the courts designated in Arts. 2 and 7 (2) plaintiffs could ask for these measures in any other Member State regardless of whether some connection with the dispute exists or not. Since the provisional measures available are those established by the procedural law of each Member State, litigants could choose the measure which benefit them the most. So for instance, it was not strange to see litigators flying to London and trying to obtain an “anti-suit injunction” – an injunction preventing the defendant from starting or continuing an action in another State–, at least until the CJEU declare the incompatibility of these measures with EU Law (CJEU Judgment 27 April 2004, C-159/02, “Turner”). Since the former Regulation did not establish any condition, such provisional measures could have extraterritorial effects as far as national procedural law so established. Certainly, this “double-alternative system” was highly beneficial for plaintiffs but it opened a door to abusive procedural tactics that may affect defendants’ right to a due process – they could be forced to defend their position in foreign courts with a few connection with the dispute.
But not everything in the former Regulation was beneficial for plaintiffs: according to the interpretation by the CJEU of present Art. 45 (b) – former Art. 34 (b) –, judicial decisions establishing a provisional measure that had been adopted without giving audience to the defendant – so-called ex parte or inaudita parte debitoris provisional measures– could not be recognised and enforced in the rest of the Member States (CJEU Judgment 21 May 1980, C-125/79, “Denilauer”). The continuity of this case law during all these years is certainly strange at least in the field of IP. The reason is that after the adoption of Directive 2004/48, all the Member States provide in their domestic legislations for ex parte provisional measures. It was frustrating that when such measures needed to be enforced in another Member State they completely lost its effects.
Having in mind this two defects of the former Regulation, while keeping the “double-alternative system”, the new Regulation introduces a simple amendment with relevant implications. In particular, after defining the term “judgment”, art. 2 (a) includes a second paragraph with the following wording:
“For the purposes of Chapter III, ‘judgment’ includes provisional, including protective, measures ordered by a court or tribunal which by virtue of this Regulation has jurisdiction as to the substance of the matter. It does not include a provisional, including protective, measure which is ordered by such a court or tribunal without the defendant being summoned to appear, unless the judgment containing the measure is served on the defendant prior to enforcement”;
The first part of this paragraph implies that those provisional measures granted by courts that declare jurisdiction on the basis of Art. 35, will not be considered “judgments” for the purpose of Chapter III. This means that they cannot be automatically recognised and enforced in accordance with the provisions in that Chapter – be aware that these provisions provide for a system of automatic enforcement of judgement without the need of passing through exequatur proceedings. The consequences are that litigants can still search for the best Member State to ask for provisional measures… but such measures would only be effective in the territory of that Member State. Therefore the risk of forum shopping in the detriment of defendant’s due process decreases.
The second part of the paragraph refers to ex parte provisional measures. The ground of denial of recognition of these measures is maintained in the Regulation because the EU legislator considers that in these situations it cannot be assured that the defendant had an opportunity to be heard. However, the recognition and enforcement of these measures is possible in particular cases where the adoption of the measure was notified to the defendant and he had the chance to oppose to the provisional measure in the Member State of origin.
While it can be affirmed that the alternatives for IPR holders to ask for provisional measures have decreased, the new text of the Brussels I Regulation is to be welcome since it strikes an adequate balance between the IPR holders’ interests in obtaining an effective enforcement of their rights and defendants’ right to a due process.
Related Posts:
- The European Account Preservation Order, a New Provisional Measure for IP Cross-border Disputes
- On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks
- AG Opinion on “Solvay”: cross-border interim measures in patent disputes
- International Jurisdiction in IPR Infringements Committed on the Internet – Revisiting CJUE decisions in “Pinckney” and “Hejduk”