When Private International Law
Meets Intellectual Property Law
A Guide for Judges

When Private International Law
Meets Intellectual Property Law
A Guide for Judges
Dr. Annabelle Bennett

Former Judge
Federal Court of Australia, Sydney, Australia
andMr. Sam Granata

Judge
Court of Appeal, Antwerp, Belgium, andBenelux Court of Justice, Luxembourg

© WIPO and the HCCH, 2019
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International Law Meets Intellectual Property Law – A Guide for Judges.
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Table of Contents

Foreword

5

About the authors

8

About HCCH and WIPO

9

Acknowledgments

10

I. When does privateinternational law meet
intellectual property law?
A. IP law and PIL
B. The intersection between
IP and PIL

11
13

14

III.Which court is competentto decide the dispute?

29

A. Establishing the legal
issues concerned

31

B. Determining whether thelegal issue can be decided
by the court

32

C. Basis of jurisdiction
1. Defendant domiciled in
the forum
2. Defendant not domiciledin the forum

33
34

3. Choice of court agreements 36
4. Specificities in IP cases

II. How is the intersection
between private internationallaw and intellectual property
regulated under various
legal frameworks?
19

32

38

D. Is the court not anappropriate forum?
Forum non conveniens

43

E. Which court within a Statehas jurisdiction to decide
the dispute?

44

A. PIL rules governing
IP relationships
1. International instruments

21
21

2. Regional instruments

21

IV. Which laws does
the court apply?

45

B. PIL rules in IP instruments
1. PIL rules in IP treaties

22
22

A. The framework47

2. PIL rules in international orregional IP registration
systems24
C. Soft law initiatives

26

B. The process of determining
the applicable law – a multiplestep process
47
Step 1: Translating thefactual situation into48
legal questions

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Step 2: Characterization

49

Step 3: Overriding mandatory
rules and identification of
choice of law rules
51
Step 4: Parties’ choice of law

54

Step 5: Application of theapplicable law

57

C. Issues in the application of
PIL to IP regarding theapplicable law

V. How can a judgment berecognized and enforced inanother State?

71

A. Collecting evidence abroad

73

B. Admission offoreign documents

78

C. Service of documents abroad 80
58

D. Cooperation and coordination
among courts
82
1. Anti-suit injunctions
83
2. Lis alibi pendens

83

61

A. Recognition and enforcementof foreign judgments
63
1. Recognition offoreign judgments
64
2. Enforcement offoreign judgments

VI. Issues relating toadministrative or judicial
cooperation

64

B. Requirements for recognitionand enforcement65
1. Reciprocity, including thestatutory approach andregistration of foreign
67
judgments
2. Grounds for refusal

67

3. International andregional instruments

69

Glossary

85

Notes

87

Foreword

Foreword5

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Intellectual property rights apply within territorial boundaries, but increasingly they are confronted with the reality of modern commerce, inwhich market transactions accommodate a host of different cross-border
entities and activities. Value chains have become global, permeated by the
movement of intangible capital such as intellectual property-protected
technology, design, branding, and literary and artistic works.
Private international law, which concerns relations between private
parties across national borders, becomes more relevant when facing thechallenges unearthed by the heightened mobility of intellectual property
and the globalized nature of commercial dealings. This intersection
between intellectual property and private international law has naturally drawn considerable academic and judicial attention, as it raises
important questions as to which court has jurisdiction to adjudicate
cross-border disputes on intellectual property, which law is to be applied,
and whether foreign intellectual property-related judgments can berecognized and enforced.
As international organizations concerned, respectively, with private international law and intellectual property, the Hague Conference on Private
International Law and the World Intellectual Property Organization jointly

6Foreword

recognized the need to address the intersection of private internationallaw and intellectual property. The product of our partnership is thisGuide, intended as a practical means of supporting the work of judges
and lawyers around the world.
This Guide is a pragmatic tool, written by judges, for judges. Experts who
specialize in one of the two fields of law will gain a reliable overview of how
these fields intertwine. The Guide does not claim to offer an exhaustive
treatment of the law in all areas, but rather elucidate the operation ofprivate international law in intellectual property matters with illustrative references to selected international and regional instruments andnational laws. It is our hope that readers will be better placed to apply thelaws of their own jurisdiction, supported by an awareness of key issues
concerning jurisdiction of the courts, applicable law, the recognitionand enforcement of judgments, and judicial cooperation in cross-borderintellectual property disputes.
We are grateful to The Honorable Dr. Annabelle Bennett and The Honorable
Judge Sam Granata for authoring the Guide, and are confident that the
Guide will assist judges and lawyers in the resolution of cross-borderintellectual property disputes.

Christophe Bernasconi
Secretary General
Hague Conference
on Private International Law

Francis Gurry
Director General
World Intellectual Property Organization

7

When Private International Law Meets Intellectual Property Law – A Guide for Judges

About the authors
Dr. Annabelle Bennett
Former Judge of the Federal Court ofAustralia, Sydney, Australia
Until March 2016, the Honorable
Dr. Annabelle Bennett AC SC served
as a Judge of the Federal Court ofAustralia, sitting in many intellectual property cases at first instanceand on appeal, and as an additional
judge of the Supreme Court of theAustralian Capital Territory. Prior toher appointment to the Federal Courtof Australia, Dr. Bennett practiced
as a Senior Counsel specializing in
intellectual property.
Dr. Bennett has also served as Presidentof the Copyright Tribunal of Australia,
Chair of the National Health and Medical
Research Council and a Presidential
Member of the Administrative Appeals
Tribunal. Her current appointments
include Chancellor of Bond University,
President of the New South Wales AntiDiscrimination Board, an Arbitratorof the Court of Arbitration for Sport,
Chair of Landservices SA, Chair of theAdvisory Board of Judges to WIPO,
Chair of the Australian Nuclear Scienceand Technology Organisation, a member of Garvan Institute for Medical
Research, a member of Chief Executive
Women, and a member of the Advisory
Board of the Faculty of Law at the
Chinese University of Hong Kong.
Dr. Bennett has a PhD in Biochemistry
as well as a degree in Law and Honorary
Doctorates from UNSW and theAustralian National University.
8

Mr. Sam Granata
Judge of the Court of Appeal of
Antwerp, Belgium, and the Benelux
Court of Justice, Luxembourg
Mr. Sam Granata is a Judge at the Courtof Appeal of Antwerp, Belgium, andat the Benelux Court of Justice, and is
an external member of the Enlarged
Board of Appeal of the European
Patent Office as well as a memberof the Legal Framework Group of
the Unified Patent Court(UPC)(Subgroup 1: Rules of Proceduresof the Court and Subgroup 6: Rules
on Mediation and Arbitration), a
member of the Conseil Benelux de la
Propriété Intellectuelle and a memberof the Belgian Board for Intellectual
Property Rights in the industrial property section.
Mr. Granata obtained a Master of
Law from the Catholic University ofLaw (Louvain, Belgium), a Master inIntellectual Property Law from theFranklin Pierce Law Center (now the
University of New Hampshire, UnitedStates of America) and a Master ofArts in Interactive Multimedia fromthe University of London (United
Kingdom). He is a published author
on intellectual property issues andrecently co-authored a book on the
Unified Patent and the Unified Patent
Court, focusing on the draft rules andprocedures of the UPC.

About HCCH and WIPO

About HCCH and WIPO
Hague Conference on Private
International Law (HCCH)
The HCCH is an intergovernmentalorganization, the origin of whichdates back to 1893. Its mandate is“the progressive unification of therules of private international law” at
the global level. It is the permanent
world organization for cross-bordercooperation in civil and commercial
matters, with over 80 Members acrossthe globe and approximately 70 moreStates that are not Members but party
to one or more Conventions – a totalof 152 States “connected” to its work.
The HCCH fulfills its mandate by developing Conventions (treaties) andother instruments in three principal
areas: international child protection and family law; international
civil procedure; and internationalcommercial and financial law. These
instruments achieve very practicaloutcomes, directly impacting andbenefiting individuals (both adults
and children) as well as commercial
operators and investors.
The work of the HCCH is therefore
highly relevant to matters of intellectual property, as these instruments facilitate, through the legal certainty andpredictability they establish, international IP transactions, the enforcementof IP rights and the resolution of IP
disputes, ultimately providing effective
private international law solutions to
the international legal framework.

World Intellectual Property
Organization (WIPO)
WIPO is the global forum for intellectual property services, policy,
information and cooperation. It isa self-funding agency of the United
Nations with 193 Member States.
WIPO’s mission is to lead the development of a balanced and effective international intellectual property systemthat enables innovation and creativity
for the benefit of all. WIPO’s mandate,governing bodies and procedures are
set out in the WIPO Convention, which
established WIPO in 1967.
WIPO helps governments, businesses
and society realize the benefits of IP.
WIPO provides:• a policy forum to shapebalanced international IP rules
for a changing world;• global services to protect
IP across borders and toresolve disputes;• technical infrastructure
to connect IP systems andshare knowledge;• cooperation and capacitybuilding programs to enable
all countries to use IP for
economic, social and culturaldevelopment; and• a world reference source of
IP information.

9

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Acknowledgments
This Guide benefited greatly from external reviews of the draft text byProfessor Pedro de Miguel Asensio, Complutense University of Madrid;
Professor Marcelo De Nardi, Unisinos University; Professor Toshiyuki
Kono, Kyushu University; Professor Axel Metzger, Humboldt University;and Professor Marketa Trimble, University of Nevada.
The United Nations Commission on International Trade (UNCITRAL)
provided valuable input to this Guide.

10

I.

When does private international law meet intellectual property law?

I. When does privateinternational law meet
intellectual property law?

11

The objective of this Guide is to give judges andlegal practitioners an overview of how privateinternational law (PIL) may apply in intellectual
property (IP) disputes. Conscious of this being acomplex subject, the Guide is designed to be as userfriendly as possible. It is written in straightforward
language and includes diagrams to help explain key
concepts that may find application in many States.
It also includes examples – both hypotheticalexamples of possible disputes where PIL and IP
might interact and real-life examples of national,
regional and international laws that may be
relevant in such disputes. The real-life examplesof laws are drawn mainly from those jurisdictions
that the authors know best, namely Australia,
Belgium and the European Union. They are purely
illustrative: this short introductory Guide does
not offer a comprehensive overview of all relevantlaws, and each reader should complement itwith more detailed study of the law relevant totheir jurisdiction.
The Guide should be considered as a stepping-stonethat will help judges and lawyers when they are
resolving cross-border IP law issues. It does not
advocate any particular approach to substantive
issues of law or provide any solutions in individual
cases; rather, by highlighting the main issues in thiscomplex area, it aims to assist judges and lawyers inmany different States to make informed decisions.

I.

When does private international law meet intellectual property law?

A. IP law and PIL
IP law and PIL are two separate and distinct fields of law.
Intellectual property law refers to the law regulating rights and obligations

in relation to creations of the mind. IP can be divided into two main categories: industrial property, which includes patents, trademarks, industrial
designs and geographical indications, and copyright and related rights.
Private international law, also known as “conflict of laws” in certain juris-

dictions, refers to the law regulating private relationships across national
borders, or in other words involving a foreign element. PIL deals with threemain issues: the jurisdiction of a court to deal with the case (international
jurisdiction), the law applicable to the case, and the recognition and enforcement of foreign judgments. Administrative and judicial cooperation
relating to these issues are also covered by PIL.
States provide civil, criminal and administrative remedies in IP disputes.
Since PIL only deals with private relations (i.e., between persons, companies,
corporations and other such legal entities), criminal and administrative
actions are generally speaking not part of PIL. However, in some jurisdictions civil or commercial claims may be part of criminal proceedings andthe criminal court may be obliged to decide on the civil or commercial
issues during the criminal proceedings. In such cases, the criminal court
should apply PIL to decide on civil or commercial claims.
Parties may resort to different dispute resolution mechanisms, including
court adjudication, IP administrative procedures and alternative dispute
resolution (ADR) procedures such as arbitration, mediation and conciliation.
If a dispute is brought before a court, and parties, IP rights or activities basedin foreign States are involved, this may raise PIL issues, such as contested
views as to the competence of the court, the law applicable to the dispute,and the recognition and enforcement of foreign judgments. The mannerin which these issues are addressed by courts in cross-border IP disputes
can contribute to enhanced IP enforcement, improve the predictability
and finality of court proceedings, avoid concerns about redundant orinadequate liability, preserve the public resources of the courts as well as
the private resources of the parties, and ultimately facilitate the soundadministration of justice.
The complex issues involved in an IP proceeding – for example validity,
ownership, infringement and contractual elements that span multiple
13

When Private International Law Meets Intellectual Property Law – A Guide for Judges

jurisdictions – may lead the parties to choose arbitration or other ADR
mechanisms which allow multijurisdictional disputes to be resolved in
one single proceeding, thereby minimizing jurisdictional or applicablelaw hurdles, and which may result in internationally enforceable awards.1
This Guide will address the intersection of IP and PIL in court proceedings.

Figure 1
When does private international law meet intellectual property law?
PIL comes into play if a dispute,or part of the dispute, involves aforeign element. Examples include:

Is there a foreign element?

No− the parties are in different States− the place of infringement is in aforeign State− the damage is incurred in aforeign State− the IP right is registered or cameinto existence in a foreign State

Yes

Does the IP dispute include a civil orcommercial element (private action)?

No

IP administrative
measures

Yes

Court adjudication

Arbitration

Yes

Yes

Other ADR
Mechanisms

Private international law meets intellectual property law

B. The intersection between IP and PIL
There are IP-specific concerns in PIL. On the one hand, IP is intangible
and globally mobile, effortlessly transcending territorial boundaries, inparticular in the increasingly online world. On the other hand, IP protection is territorial: the scope of IP protection is determined by national orregional IP laws. In addition, a number of IP rights come into existence
through formalities, such as registration or grant, that involve public
administrative authorities. This feature of IP, which links it closely tothe sovereignty or public policy space of the State granting protection,
accentuates the territoriality of IP and IP law.
14

I.

When does private international law meet intellectual property law?

The inherent territorial nature of IP, combined with globalization, digitization and the easy means of dissemination which promote cross-border
IP activity, has led to legal practitioners being frequently confronted withissues where IP meets PIL. Bringing predictability and finality in multiState disputes is increasingly challenging, and courts are grappling todetermine connecting factors in cross-border activities. Online activities,
in particular, result in immediate, remote and global access, raising thepossibility of instantaneous IP infringement all over the world.
These developments have brought an important player into the spotlight:
the intermediary. In a physical world this could be the agent or transporterof goods; in an Internet environment, it could be the company owning
the server or the service provider giving access to allegedly infringing
material. A vast number of legal issues in the IP and PIL field are related
to the rights and obligations of such intermediaries.
The essence of applying PIL in IP disputes is to distinguish foreign elementsin the dispute. The foreign elements may typically involve the foreign
location of: one or both parties; the protected IP right; the IP-infringing
activity; or the effect of or damage caused by the infringing activity. The
nature of the protected IP right – in particular, whether it is a right thatcomes into existence through formalities that involve public administrative authorities such as registration or grant (e.g., patents, registeredtrademarks or registered industrial designs) or whether it is a right whoseenjoyment and exercise are not subject to any formality (e.g., copyright,
unregistered trademarks or unregistered industrial designs) – will influence the PIL considerations.
Examples of PIL issues arising in IP disputes

The following examples demonstrate PIL issues that may arise in IP disputes:
Example 1: Non-contractual IP infringement dispute
Party A owns the copyright in a film script in States X and Y. In
State Z, the term of copyright protection has expired and the work
is in the public domain. Party B, resident in State Z, distributes thefilm through the Internet via a server in State Z, making it accessible
worldwide, including in States X and Y. Party A initiates proceedingsin State X, where it is resident and where it owns a valid copyright,
and claims damages for infringement in States X, Y and Z.

15

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Example 2: Contractual IP dispute and questions of IP validity
Parties A and B, resident in States X and Y respectively, enter into alicense agreement regarding the distribution of the goods produced
using a technology patented by Party A in States X and Y. The
license is governed by the law of State X. A dispute over an alleged
breach of the license arises and Party A initiates a court proceedingin State X, where it is habitually resident. Instead of, or as well as,
bringing claims under the licensing agreement, Party A claims patent
infringement by Party B in States X and Y. Party B counterclaims that
Party A’s patents in both States are invalid.

In these cases, the court will first decide whether it has judicial competenceover the dispute, and, if it decides that it does, it will then determine thescope of the disputed matter that falls within its competence. In Example 1,
does the court have jurisdiction in relation to infringement in States X,
Y and Z, or only that in State X? In Example 2, does the court in State X
have jurisdiction to rule on Party B’s counterclaim of patent invalidity inStates X and Y? These issues are addressed in Chapter III of this Guide.
If a court decides that it is competent to decide the dispute, it will be necessary to determine the laws that it will apply to the dispute. In Example 1,
which laws will the court in State X apply – the laws of X, Y and Z or onlythat of X? These issues are addressed in Chapter IV of this Guide.
Once a case has been decided by the competent court applying the applicable law, the issue arises of the recognition and enforcement of thejudgment abroad. In Example 1, if the court in State X determines that
infringement took place in States X and Y and orders damages to be paid
by Party B whose assets are in State Z, can the court in State Z recognize
and enforce that judgment, and will it do so? These issues are addressedin Chapter V.

Figure 2
Sequence of PIL issues to consider

Which court decides?

16

Which laws apply?

When areforeign judgments
recognized and enforced?

I.

When does private international law meet intellectual property law?

This Guide is not intended to be an exhaustive discussion of all of thefactors that may be taken into account by a court in relation to IP and PIL.
Jurisdiction and certain factors, such as connecting factors, will likely be
the subject of statute, regulation, common law rules or rules of court to agreater or lesser degree in different States. It will be necessary to ascertain
any such provisions and then consider any further factors relevant to thedecision to be made.
The Guide is not intended to cover every possible situation; rather it highlights some of the issues that may be encountered. It points to existing
international agreements that may affect different jurisdictions, and tonational provisions that may be used to apply the principles contained
therein if permissible in a specific jurisdiction. Further, the Guide indicatessome of the complexities in this area which may arise and which have notyet, as at time of writing, been resolved.

17

II.

Howistheintersectionbetweenprivateinternationallawandintellectualpropertyregulatedundervariouslegalframeworks?

II. How is the intersection
between privateinternational law andintellectual property
regulated under various
legal frameworks?

19

While there is no established comprehensive PIL
regime for IP at the international level, there areinternational and regional PIL instruments that
apply to IP, and IP instruments that make reference
to PIL issues.
This chapter provides an overview of PIL rules
governing IP relationships, and PIL rules in IP
instruments, with reference to international andregional treaties.

II.

How is the intersection between PIL and IP regulated under various legal frameworks?

A. PIL rules governing IP relationships
1.

International instruments

Several international PIL instruments touch upon cross-border IP litigation. The Hague Conference on Private International Law (HCCH) has
addressed the intersection between IP and PIL in the HCCH Convention
on Choice of Court Agreements and the HCCH Principles on Choice of
Law in International Commercial Contracts.
While not all States are parties to these PIL instruments, and may therefore
not be bound by them, they may provide useful guidelines.
The HCCH Convention of 30 June 2005 on Choice of Court Agreements(HCCH Choice of Court Convention) aims to ensure the effectiveness ofchoice of court agreements between parties to international commercial
transactions as well as the enforceability of judgments resulting from suchagreements. The Convention applies to exclusive choice of court agreements
concluded in civil or commercial matters and provides a sophisticated IP
regime, as described in part III.C.3 of this Guide.
2.

Regional instruments

A number of regional instruments have been concluded among States sharing
a common legal tradition or geographic proximity. These instruments treat
IP differently. Some do not contain any specific rules for IP disputes so theirgeneral PIL rules apply to IP disputes. The Minsk Convention,2 the Montevideo
Convention,3 the Las Leñas Protocol,4 the Protocol of Ouro Preto on Preventive
Measures,5 the Inter-American Convention on the Extraterritorial Validityof Foreign Judgments and Arbitral Awards,6 the Arab League Judgments
Convention7 and the Riyadh Convention8 fall into this category.
On the other hand, some regional instruments provide specific PIL rules
for IP disputes. For example, in the European Union (EU), the Brussels Ia
Regulation,9 the Rome I Regulation10 and the Rome II Regulation,11 specifically address the intersection between PIL and IP.
The Brussels Ia Regulation is the most recent instrument of the Brussels
Regime. It aims to facilitate the free circulation of judgments and sets out
uniform rules of international jurisdiction for most civil and commercial
disputes heard by courts within the EU. While certain disputes are subject
to exclusive jurisdiction, parties may agree on a chosen court in other21

When Private International Law Meets Intellectual Property Law – A Guide for Judges

cases. The Regulation also sets out which other jurisdiction rules apply by
default. The general rule determines that the defendant shall be sued in theMember State where he or she is domiciled, regardless of nationality. To
facilitate the sound administration of justice, the Brussels Ia Regulationprescribes specific rules under which the defendant may also be sued in
the courts of another Member State, discussed in part III.C.
The Rome I Regulation deals with the law applicable to contractual obligations in civil and commercial matters which have a foreign element. The
parties’ freedom to choose the applicable law is one of the key principles of
the Regulation. In the absence of a choice of law, the applicable law rules
take into account the particular type of contract. The applicable law istypically the law of the State in which the party who is required to effect thecontract’s “characteristic performance” has his or her habitual residence,
except where the contract is more closely connected to another State or
it is not possible to identify the contract’s “characteristic performance.”
The Rome II Regulation deals with the law applicable to non-contractual
obligations in civil and commercial matters which have a foreign element.
It includes specific rules for the infringement of IP rights, discussed inpart IV.B of this Guide.

B. PIL rules in IP instruments
1.

PIL rules in IP treaties

The international IP system aims to facilitate IP protection across borders by combining multiple approaches. These include affirmation of theterritorial nature of IP rights, harmonization of national IP laws throughthe establishment of minimum standards, and granting equal treatment
to IP owners whether they be national or foreign.
The territoriality of IP rights is underscored in international IP treaties
through the principle of independence of rights. The Paris Convention for
the Protection of Industrial Property provides for the mutual independenceof patents and trademarks, establishing that patents obtained for the same
invention in multiple countries are independent of each other (Article 4bis)and that trademarks registered in a State are independent of those registeredin other States (Article 6). These IP rights, once granted, remain independentand unaffected by the fate of registrations of the same subject matter in otherStates, and operate within the territorial boundaries of local protection.
22

II.

How is the intersection between PIL and IP regulated under various legal frameworks?

Exceptions are supranational, unitary IP rights created through regional
agreements, discussed in part II.B.2 below. In the case of copyright, theBerne Convention for the Protection of Literary and Artistic Works equallysets out the independence of copyright in terms of both enjoyment andexercise, distinct from the existence of copyright protection for the same
work in other States, including the State of origin of the work (Article 5(2)).
A number of international IP treaties introduce substantive minimum
standards and achieve substantive harmonization by reducing thedifferences that exist between national IP laws. These include the 15 IP
protection treaties administered by WIPO as well as the WTO Agreement on
Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement).
In addition, the WIPO Joint Recommendation Concerning Protection ofMarks, and Other Industrial Property Rights in Signs on the Internet (Joint
Recommendation; 2001), an instrument aiming to facilitate progressive
development of IP law, addresses the manner in which a domestic IP
law would apply to cross-border acts on the Internet, providing a link
between the Internet and territorial national laws. In doing so, the Joint
Recommendation, while specifically excluding choice of law issues, bears
some similarity with PIL approaches in seeking connecting factors thatlink an activity with a State (see part III.C.2 below).
The principle of national treatment is enshrined in international IP
treaties (Article 2(1) of the Paris Convention, Article 5(1) of the Berne
Convention and Article 3 of the TRIPS Agreement), and calls for foreign
nationals to enjoy the same treatment as that enjoyed by domestic nationals, implying a uniform, non-discriminatory application of domestic IP
laws to domestic and foreign nationals. For example, if the copyright in awork by a Senegalese author, published for the first time in Côte d’Ivoire,is infringed in France, the author must be treated in France as if the work
were one made by a French author and published in France. The national
treatment principle is also often included in bilateral or multilateral free
trade agreements, where IP is dealt with.
As set out above, international IP treaties address relationships with foreign
elements across different legal jurisdictions, providing guidance on how
cross-border issues should be addressed. Provisions explicitly addressing
issues of jurisdiction, applicable law and recognition and enforcement offoreign judgments are, however, rare.
The above-mentioned national treatment principle may be interpreted
as announcing, in addition to non-discrimination, a conflict of laws rule.
23

When Private International Law Meets Intellectual Property Law – A Guide for Judges

This interpretation, however, is not universal. Similarly, there are also
discussions whether or not Article 5(2) of the Berne Convention, which
provides that “the extent of protection, as well as the means of redressafforded to the author to protect his rights, shall be governed exclusively
by the laws of the country where protection is claimed”, may be interpreted
as a conflict of laws rule, i.e. lex loci protectionis. Similar provisions arefound in the Rome Convention for the Protection of Performers, Producers
of Phonograms and Broadcasting Organizations (Article 7) and the Beijing
Treaty on Audiovisual Performances (Article 5). The Berne Convention
also addresses ownership of copyright in cinematographic works, designating the applicable law as the law “in the country where protection isclaimed” (Article 14bis).
Applying a territorial approach to online activities such as simultaneous
infringements through the Internet presents challenges, and the concept of“the country where protection is claimed” may acquire or require a distinct
meaning. One example of an effort to provide such a specific meaning is
the EU Satellite Broadcasting and Cable Retransmission Directive,12 whichcharacterizes the “country where protection is sought” as the country fromwhich a multiterritorial communication originates, and establishes thatthe rights of copyright holders are exclusively determined by the law of
the EU Member State from which a signal is transmitted up to a satellite(Article 1(2)(b)).
2.

PIL rules in international or regional IP registration systems

Regional IP harmonization has been achieved by a number of regionalorganizations, including the EU, the African Regional Intellectual Property
Organization (ARIPO), the African Intellectual Property Organization (OAPI),the Southern Common Market (Mercosur) and the Andean Community.
There are also regional courts that address IP issues. In the EU, the Court ofJustice of the European Union (CJEU) provides guidance on EU Regulations
and Directives, including those relating to IP, and receives appeals against
decisions of the European Union Intellectual Property Office (EUIPO) regarding unitary EU IP rights. Similarly, in the Andean Community, which
comprises the four South American countries of Bolivia, Colombia, Ecuador
and Peru, the Court of Justice of the Andean Community interprets the laws
and regulations of the Andean Community, including those relating to IP.
The Andean Court is one of the most active international courts, issuingmore than 4,000 rulings to date, over 90 percent of which relate to IP. Mostof the Andean Court’s preliminary rulings originate from challenges to a
24

II.

How is the intersection between PIL and IP regulated under various legal frameworks?

national IP agency’s decision to grant or deny an application to register
an IP right, but the Court has also addressed cases challenging nationallaws as a violation of Andean IP rules.
In most cases, IP rights are obtained through national processes in eachcountry for which protection is sought, and as seen above, these nationalrights are mutually independent. Some IP rights, however, come into existence through international or regional IP instruments that facilitate
protection across borders or that grant IP rights transcending borders.
These instruments either result in the obtainment of a bundle of nationaland regional territorial rights through a single international or regional
application, or grant unitary, “supranational” rights through one registration.
Instruments facilitating the obtainment of a bundle of rights include theWIPO administered Patent Cooperation Treaty (PCT; patents), Madrid(trademarks), Hague (designs) and Lisbon (appellations of origin) Systems
as well as regional instruments such as the Harare Protocol on Patents andIndustrial Designs, the Banjul Protocol on Marks and the Arusha Protocol
for the Protection of New Varieties of Plants administered by ARIPO, theEuropean Patent Convention (EPC) established in the framework of theEuropean Patent Organization (EPO), and the Eurasian Patent Conventionof the Eurasian Patent Organization (EAPO). Typically, once granted theserights are subject to national (or regional) laws and national (or regional)
enforcement procedures.
Instruments granting supranational, unitary IP rights include those
governing the European Union (EU) trademarks and Community design
rights, the (future) unitary patent granted under the EPC, the Bangui
Agreement administered by OAPI, and the Gulf Cooperation Council(GCC) patent system. These instruments may contain specific rules ofjurisdiction establishing a separate and distinct court system, designating
national courts with specific competences or relying on national courts
to apply general private international law principles.
For example, while European patents under the EPC are enforced at thenational level, a Unitary Patent Protection (UPP) system, building on the
EPC through EU Regulations 1257/2012 and 1260/2012, will make it possible
to acquire unitary effect for a European patent in up to 25 EU Member
States (i.e. those which have so far signed the Agreement on a Unified
Patent Court (UPC)). This Agreement establishes a court system consistingof a Court of First Instance, a Court of Appeal and a Registry which areseparate from national court systems. The UPC will, as a general rule, have25

When Private International Law Meets Intellectual Property Law – A Guide for Judges

exclusive competence in civil litigation on matters related to European
patents with unitary effect, classical European patents, supplementary
protection certificates issued for a product covered by such a patent, andEuropean patent applications.
In the European Union, unitary trademarks valid throughout the EU
have been established through the EU Trademark Regulation (EUTMR),
which has its own jurisdictional regime. The EUTMR does not establish aseparate court system, but for infringement actions it grants international
jurisdiction to certain specified courts, EU trademark courts, which arenational courts functioning as EU courts in the adjudication of disputes
involving unitary EU trademark rights. Analogous provisions are present
in the Community Design Regulation.
OAPI rights, while deriving from a uniform administrative system, areenforced in national civil and criminal courts which apply the legislationof each of the Member States in which they have effect. For patents, theBangui Agreement specifies jurisdiction, stating that the owner of thepatent has the right to institute legal proceedings before the court of theplace of the infringement.

C. Soft law initiatives
There are also non-binding instruments dealing with IP and PIL, for example,
the 2015 HCCH Principles on Choice of Law in International Commercial
Contracts (HCCH Principles). The Principles provide a comprehensive
blueprint to guide users in creating, reforming or interpreting choice oflaw regimes at the national, regional or international level. They endorse
party autonomy by giving practical effect to the choice made by parties
to a commercial transaction as to the law governing their contractual
relationships. They are relevant to international contracts concerning
IP rights, such as IP licensing contracts and IP transfer contracts, which
often contain the parties’ choice of applicable law.
Various soft law initiatives regarding the interface between PIL and IP
have proposed de lege ferenda normative frameworks for the adjudication of cross-border IP disputes or have aimed to guide relevant legal
processes. They include the American Law Institute (ALI) Intellectual
Property Principles Governing Jurisdiction, Choice of Law, and Judgmentsin Transnational Disputes of 2008; the European Max Planck Group’s
Principles on Conflict of Laws in Intellectual Property (CLIP) of 2011;
26

II.

How is the intersection between PIL and IP regulated under various legal frameworks?

the Transparency of Japanese Law Project’s Proposal on Jurisdiction,
Choice of Law, Recognition and Enforcement of Foreign Judgments inIntellectual Property of 2009; and the Joint Proposal on the Principles ofPrivate International Law on Intellectual Property Rights of 2010, which
was drafted by Members of the Private International Law Associationof the Republic of Korea and Japan. The International Law Association(ILA) Intellectual Property and Private International Law Committee iscurrently working to produce its Guidelines on Intellectual Property in
Private International Law.

27

III.

Which court is competent to decide the dispute?

III. Which court iscompetent to decide
the dispute?

29

The court where the proceedings are commenced
must first decide whether that court is anappropriate place for the determination of theproceedings. That requires consideration of whatconnection the parties, the subject matter and therelief sought have with that State.
Whether a court is competent to decide an IP dispute– in other words, whether it has jurisdiction over the
dispute – will be decided according to the PIL rulesof the State where the court is located, which may
also be impacted by international or regional PILor IP instruments. It is possible that courts in morethan one State have jurisdiction to decide a dispute,which in practice allows the claimant to select a
court (sometimes referred to as “forum shopping”).
The question whether a court has jurisdiction todecide a dispute is separate from the question ofwhich law the court will apply to that dispute. For
example, a court in State X may have jurisdiction
to decide an IP contractual dispute, while the lawthat applies to the determination of that disputemay be that of State Y. This issue of applicable law is
discussed in part IV of this Guide.

III.

Which court is competent to decide the dispute?

Figure 3
Which court is competent to decide the dispute?
Establishing the legal issues concerned

validity of an IP right; ownership; infringement; contractual elements; other causes of action

No

Is my court bound by any international orregional instruments?

National rules will determine
which court is competent todecide the matter at stake.

Yes

Jurisdiction rules of
the relevant instrument
should be followed.

Specificities in
IP cases

Defendant
domiciledin the forum

Defendant
not domiciledin the forum

Choice of court
agreements- Jurisdiction overinfringement- Jurisdiction
over validity or
registration- Jurisdiction overcontract- Common approach- “General”
jurisdiction- Service- Connecting factors

Parties’ choiceof forum in their
IP contractual
disputes or othermutual agreement
should generally berespected

A. Establishing the legal issues concerned
The first step for the court will be to consider and characterize thenature of the proceeding, the dispute and the relief sought. This isparticularly important as different characterizations may lead to theapplication of different PIL rules or indicate a different law applicableto the dispute.
IP disputes may involve, for example: the existence or validity of an IP right;
ownership of an IP right; infringement of an IP right; contractual elements;and other causes of action based on specific statutes dealing with unfair
competition or with the tort of passing off. These may overlap and present
challenges to the characterization of the proceeding. Increasingly, partiesare looking to competition law, in particular where patents are essential
to a standard (e.g., in telecommunications).
31

When Private International Law Meets Intellectual Property Law – A Guide for Judges

The relief that is sought may vary and may include monetary relief, a declaration of validity or invalidity of an IP right, an injunction to prevent or
restrain infringement, or the assignment of IP rights.

B. Determining whether the legal issue can bedecided by the court
It is relatively straightforward to establish jurisdiction for disputes thatare national, for example where the issue is one of validity of a local IP
right, or infringement where the alleged infringing act and the defendant
are in the jurisdiction.
A more complicated question arises where a dispute is connectedwith more than one State, such as where the defendant is located ina foreign State.

C. Basis of jurisdiction
In many common law jurisdictional structures, “personal jurisdiction,”
which concerns the power of the court to render a decision binding upon
the parties involved in the litigation, requires that the defendant has
sufficient contact with the place where the court is located. “Subject
matter jurisdiction,” which refers to the power of a court to decide ina matter depending on the nature of the claim or controversy brought
before that court, requires that a court has jurisdiction over the legal issues
in dispute. Both personal jurisdiction and subject matter jurisdiction
are required for a court in a common law State to exercise jurisdiction
over the dispute.
In the EU, under the Brussels regime, jurisdiction may be based on “generaljurisdiction” (the defendant’s domicile), “special jurisdiction” (e.g., formatters relating to contract or tort) and “exclusive jurisdiction” (e.g.,
for matters relating to validity of registered IP rights).
The following section describes the commonalities and specificities ofthese jurisdictional approaches.

32

III.

Which court is competent to decide the dispute?

Figure 4
Determining the basis of jurisdiction (under common law)
Can the foreign defendant be served (in common law
jurisdictions) or has the foreign defendant submitted
to the jurisdiction?

Does an exception to personal jurisdiction apply?

Is the proceeding of a type that is connected to thecourt’s jurisdiction?

Should the court in its discretion decline
to decide the dispute?

Is the court a non-convenient forum (forum non conveniens)?

Leave to serve granted or leave to proceed given.

Defendant must be served in accordance with the relevant rules.

1.

Defendant domiciled in the forum

A common approach is that the court of the State in which the defendantis domiciled will have jurisdiction over that defendant, including withrespect to facts occurring outside that State. PIL questions frequently
require determination of a party’s “domicile,” “residence” or “habitualresidence,” which essentially focuses on a person’s “principal home”. The
question of where a person is “at home” is generally determined according
to the law of the State in which the action is brought (lex fori). For example,
Brussels Ia Regulation Article 4 confers “general jurisdiction” to thecourts of the Member State where the defendant is domiciled, which will
have jurisdiction to grant remedies in all relevant territories including
for the harm outside the forum. In Australia, this is a connecting factor;
see part III.C.2 below.
As actors in IP value chains become more numerous, disputes involving
multiple defendants located in different States become more frequent.
When there are multiple defendants involved in IP disputes (for instance,
subsidiaries of the same multinational pharmaceutical company), there
may be an option for defendants to be sued in the courts of the place where33

When Private International Law Meets Intellectual Property Law – A Guide for Judges

any one of them is domiciled. In an IP dispute arising out of the operationsof a branch, agency or other establishment (for instance, the local agentof a foreign publisher), the defendant may be sued, by virtue of nationallaw or treaty law, in the courts of the place where the branch, agency orother establishment is situated.
In the EU, Brussels Ia Regulation Article 8(1) provides such a possibility
when “the claims are so closely connected that it is expedient to hear anddetermine them together to avoid the risk of irreconcilable judgments
resulting from separate proceedings.” The CJEU introduced the twin
requirements of “same situation of law and fact” in order to determine
whether there is a risk of irreconcilable judgments. This rules out theconsolidation of multiple defendants in disputes involving parallel IP
rights registered in different States.13
2.

Defendant not domiciled in the forum

Service

Unlike in civil law countries, in common law countries service plays
an important role in establishing the court’s jurisdiction. Generally, incommon law countries personal jurisdiction means that the court has
jurisdiction over a defendant in a personal action. Service is required even
if the defendant is domiciled in the forum; however, the practicalities andrules for service are more complicated for a defendant not domiciled in
the forum. The court will have personal jurisdiction over a defendant not
domiciled in the forum only if:(a) the party has been validly “served” (including deemed or substituted service), meaning that they have been properly and formallynotified of the proceeding in accordance with the rules of service
in that court; or(b) the party submits to the court’s jurisdiction.
Using Australia as an example, the specific rules that apply to service
on a foreign person are set out in the rules of each court. The rules ofcourt are the set of procedural rules issued by the court which govern
the conduct before the court, and which have force as a statutory
instrument. The rules may allow for service in accordance with international conventions.
If a party is domiciled or located outside the forum State, a set of rules
must be followed to serve that party validly. Those rules may apply or be
34

III.

Which court is competent to decide the dispute?

governed by international or regional treaties, for example the Conventionof 15 November 1965 on the Service Abroad of Judicial and Extrajudicial
Documents in Civil or Commercial Matters (the HCCH Service Convention;

see part VI.C) and in the EU, the Service of Documents Regulation,14 andmay provide multiple options for serving the defendant.
Connecting factors

Service alone may not suffice to obtain jurisdiction over the defendant.
In order to bring the defendant within the jurisdiction of the court, there
must be a sufficient connection between the dispute and the State. For
example, it would generally be seen as inappropriate for a court in one
State to decide a dispute that is entirely unrelated to that State.
In general terms, connecting factors, as may be provided for in the statutes
or in the rules of court, might include proceedings that:• are based on a cause of action arising in the State;• are based on a breach of contract in the State or a contract made inor governed by the law of the State;• are based on a choice of court agreement;• involve a contravention of legislation of that State;• involve property in that State; or• involve a tortious act committed in, or tortious damage suffered in,that State.
In common law countries such as Australia, the existence of a “connecting factor” may be necessary to establish personal jurisdiction by way ofservice on the defendant outside the jurisdiction. In such case, the rulesof court or common law rules may provide for the connecting factors.
In the EU, Brussels Ia Regulation Recital 16 provides that in addition to
the defendant’s domicile, there should be alternative grounds of jurisdiction based on a close connection between the court and the action or inorder to facilitate the sound administration of justice. The existence of aclose connection should ensure legal certainty and avoid the possibility ofthe defendant being sued in a court of a Member State which they could
not reasonably have foreseen. Article 7 provides for the grounds for suchspecial jurisdiction in matters including contract and tort.
Exceptions

It is a common approach that there are exceptions to the personal jurisdiction of the court. These may include:35

When Private International Law Meets Intellectual Property Law – A Guide for Judges• title to foreign property;• foreign State immunity; and• diplomatic immunity.
Title or validity of immovable property may be an exception, on the basisthat it is a right created by a foreign State. Similarly, the court may nothave jurisdiction to decide claims of title or rights to foreign IP. However,a question may arise as to whether this exception only applies to registered rights (such as patents or trademarks) or whether it applies to rightsthat exist automatically (such as copyright). In addition, a court may bewilling to decide a question of title or validity when that question arises
incidentally in an action over which the court has jurisdiction, such as acontractual dispute (preliminary question); see part III.C.4.
3.

Choice of court agreements

Parties to a contract may agree on where a dispute arising under thecontract should be decided, before or after a dispute has arisen. These are
known as choice of court, choice of jurisdiction or choice of forum clauses.
This is separate and distinct from a choice of law clause, meaning a clausein which parties decide the substantive law that governs the contract.
Parties may decide:• that the dispute may be heard in a particular court (non-exclusive
clause); or• that the dispute must be brought exclusively in one court(exclusive clause).
A non-exclusive choice of court clause may establish a connecting factor or
may influence the court’s discretion. Generally, an exclusive choice of court
clause should be enforced unless there are good reasons for not doing so.
Grounds for not enforcing such a clause may include public policy grounds.
However, a choice of court agreement may not have any effect on the jurisdiction over the registration or validity of an IP right when certain courts
have exclusive jurisdiction over that right; see part III.C.4.
The HCCH Choice of Court Convention deals with the effectiveness of exclusive choice of court agreements. It is based on three key obligations: 1) the
chosen court must hear the dispute, unless the agreement is null and void
as to its substantive validity under the law of the State of the chosen court;
2) any non-chosen court must suspend or dismiss proceedings to which an
36

III.

Which court is competent to decide the dispute?

exclusive choice of court agreement applies; and 3) a judgment given by thechosen court must be recognized and enforced in other Contracting Parties.
With regard to IP cases, the HCCH Choice of Court Convention distinguishes between copyright and related rights on one hand and other IP
rights on the other, and deals with them differently. Copyright and related
rights are fully within the scope of the Convention, even when the validityof such rights is challenged. It should however be noted that a judgmenton this issue has only effect inter partes.
On the other hand, the validity and infringement of IP rights other thancopyright and related rights are matters excluded from the scope of theConvention, if raised as an object of proceedings. This exclusion is subject
to one important exception: when infringement proceedings are broughtor could have been brought for breach of contract between the parties,
the proceedings are covered by the Convention. This is so even where an
infringement is brought in tort rather than in contract. Furthermore, theConvention does not apply to proceedings for revocation or for a declaration of invalidity of IP rights that require registration. When the validityof such a right is raised as a preliminary question, for example as a defense
in proceedings for the payment of royalties, the Convention continues toapply to the main claim (payment of royalties). However, the preliminary
ruling on validity will not be recognized or enforced under the Convention,and if the preliminary ruling on validity is inconsistent with a judgment or
a decision of a competent authority on the validity of the right concerned
given in the State under whose law the IP right arose, the judgment on themain claim (which relied on the preliminary ruling on validity) may berefused for the purposes of enforcement.
Figure 5
Operation of the HCCH Choice of Court Convention
Company
in State A

Exclusive choice of court agreement
designating courts in State B

Company
in State B

Party brings proceedingsin the courts of State A

If proceedings are brought inthe courts of State B then:The courts of State A must
decline to hear the case

The courts of State B
must hear the case

The judgment of the court ofState B must be recognized andenforced in other Contracting
States37

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Similarly, under the Brussels Regime, where parties agree on a choiceof court clause, the chosen court shall settle their IP dispute, unless theagreement is null and void as to its substantive validity under the law of
the Member State of the chosen court. Party autonomy does not extend
to the registration or validity of patents, trademarks, designs or othersimilar rights required to be deposited or registered, which, as explained
below, fall under an exclusive jurisdiction rule. Where connecting factors
are taken into account, as in Australia, the agreement on a choice of court
clause would be such a connecting factor.
4.

Specificities in IP cases

Whether a connecting factor exists may depend upon the relevant
legislation, or the common law. IP legislation may state that it is an infringement of that statute only if an act occurs within a specific territory.
The court should first establish whether an IP statute contains relevant
provisions to determine territorial jurisdiction. The factors connecting
the court and the dispute for jurisdictional determination may overlap
to some extent with the factors determining issues of substantive IP
law, such as whether and where infringement took place. In the online
context, for example, whether a court has jurisdiction to determine a
dispute relating to trademark infringement may be influenced inter alia
by whether there has been a preliminary finding of infringement of aregistered trademark in that jurisdiction, which may raise the question
whether persons in that jurisdiction have been targeted. This will also
be a relevant factor for determining the applicable law. The determination of jurisdiction and the applicable law are, however, distinct for the
purposes of legal analysis.
Jurisdiction over infringement

Jurisdiction over IP infringement is generally governed by the principles
applicable to tort jurisdiction.
In common law jurisdictions, the question whether a tort has occurredin the jurisdiction is one of the questions relevant to establishing a connecting factor for the purposes of establishing personal jurisdiction orservice on a defendant outside the jurisdiction. Jurisdiction to hear aclaim of infringement of an IP right is conferred on the courts of the Statein which the IP right is protected. In general, claims for IP infringement
occurring within a State cannot be brought on the basis of IP rights protected in foreign States.

38

III.

Which court is competent to decide the dispute?

In the EU, Brussels Ia Regulation Article 7(2) provides that in matters relating
to tort, delict or quasi-delict, a person domiciled in another Member Statemay be sued in the courts of the place where the harmful event occurredor may occur. The CJEU has interpreted this as meaning “both the place
where the damage occurred and the place of the event giving rise to it.”In the increasingly online world, determining whether an IP right has been infringed in a State may not be straightforward. For example, there are a numberof possibilities in relation to the location of online activities. These include:• the location of the actor;• the location of the uploading or downloading server;• the location of the person on the receiving end of the action (such as
a communication);• the location or locations at which the online action is targeted; or• both the upload and download locations.
Determining which test for the location of an online activity should apply
is a relatively new area of law, and the tests applied may vary between
jurisdictions. Importantly, differences may derive from the nature of thecause of action at issue. For example, the essence of one cause of action
may be damage to the right holder, while the essence of another may be amonopoly over certain types of action.
Example: Distribution through the Internet of a copyrighted work
A copyrighted work is distributed through the Internet via a server
located in State X, where the copyright has lapsed. The work isaccessible worldwide, including in States where the copyrightprotection subsists. The copyright owner initiates proceedings inState Y where he still owns a valid copyright.

To establish a connecting factor, links may be asserted with courts:• where the person infringing is physically located;• where the damage has occurred, which may be the location of the
copyright owner;• where people can receive or view the copyright work;• where the target audience for the website is located;• where the technical process making the copyright work visible on
the Internet was activated; or• where the data are physically located (the location of the server).
39

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Whether jurisdiction is conferred on a particular court in such cases will
largely depend on how broadly or strictly the connecting factors are interpreted and applied. The analysis is not always straightforward.
For example, “where persons can receive or view the copyright work”(or in other words, where the copyright work is simply accessible) in an
online context may be any place in the world where Internet access istechnically possible. As noted above, the CJEU has interpreted “the place
where the harmful event occurred” to cover both the place where thedamage occurred and the place of the event giving rise to it. Thus, in theabove example, a court in State Y would have jurisdiction in respect of an
infringement of copyright resulting from the placing of the protected work
online on a website accessible in the territorial jurisdiction of State Y. In
such an event, in general, on the basis of the principle of territoriality ofIP rights, that court would have jurisdiction to rule only on the damage
caused in that territorial jurisdiction.15
On the other hand, courts of other jurisdictions may reject mere accessibility as a sufficient connection and require closer links to the forum, suchas targeting or actual harm. “Where the target audience for the website is
located” is an alternative approach to “where persons can receive or viewthe copyright work.” This would mean that copyright is infringed only inthe particular countries targeted by a website, rather than in every country
in which the website is accessible.
Courts of yet other jurisdictions may find that the infringement occurs
in multiple places. For example, a court may find that the infringement
occurs both in the country where the offending material was uploaded andin the country where it was downloaded. The Supreme Court of Canada
has held that online copyright infringement can occur at both the placeof upload and the place of download.16
The nature of the IP right will prompt different jurisdictional analysis. In
the EU, whereas accessibility of a protected work may (depending on thelaw of the State) suffice to confer jurisdiction in copyright infringementcases, for trademark cases mere accessibility may not be sufficient andstronger connecting factors such as “targeting” the territorial jurisdiction
may be required.
In the copyright example above, courts in State X would also have jurisdiction, because it is where the defendant is resident, and also because
it is the place of the event giving rise to the infringement, namely where
40

III.

Which court is competent to decide the dispute?

the technical process that made the contested work accessible on theInternet was activated.17 The latter will in general coincide with the defendant’s location.
As can be seen from the above discussion, in deciding whether there
should be service out of State, or – in civil law jurisdictions – whether it
may assume jurisdiction, the court may well need to consider the alleged
IP infringement, and may thus in effect make a preliminary finding as towhether there has been infringement within the State. In other words, it
may be necessary to make what may amount to a preliminary finding as
to whether there has been an infringement of an IP right within the Statein order to determine whether the court has jurisdiction over the causeof action.
Provisional measures used prior to or during a trial, are of particular importance in IP litigation, and may take the form of interim injunctions or
performance, conservatory or evidence orders. Generally, a court having
jurisdictional competence on the substance of a case will have competence
to order provisional measures. In addition, jurisdictional competence forprovisional measures may be based on the place of enforcement of themeasure or when available under the laws of the State of the seized court,
and may not necessarily accord with the court having jurisdiction overthe IP infringement. For example, in some countries, such as Belgium
and France, courts may grant orders to preserve evidence to be executed
within their territory, in order to allow an IP owner to proceed with an
infringement dispute in a different State. Provisional measures may berequested in ex parte proceedings, where the same test for jurisdictional
competence will apply. Nevertheless, as the defendant cannot argue an
exception regarding the jurisdictional competence of the seized court, thecourt should be even more active in its examination of its competence. (Amore detailed examination of interlocutory measures, including injunctions
and orders for preservation for example, are beyond the scope of this Guide.)
Jurisdiction over validity, grant or registration
Example: IP ownership dispute
A patent has been granted in State X in the name of multinational
company A, which has its headquarters in State Y. The employee
who actually invented the patented product alleges that the patentshould be registered under her name as she developed the product inState Z.

41

When Private International Law Meets Intellectual Property Law – A Guide for Judges

In IP, it is generally accepted that the validity and registration of IP rights
are an “exclusive” matter for the courts of the State in which registration
has taken place or is sought, regardless of the domicile of the parties in theproceeding or any connecting factors with other States. This is because
registered IP rights are territorial rights, limited to the territory in which
the IP has been registered, with attendant public interest. Exclusive jurisdiction means that only the courts of one particular State can decide a
dispute, regardless of the domicile of the parties in the proceeding.
In the case of unregistered IP rights, such as copyright, which are also territorial but do not require any public administrative act for the right to be
exercised, courts may be more open to deciding on foreign IP infringement
claims, especially when the validity of the IP right is not challenged. Suchrights may also raise ownership issues, and jurisdiction will be determined
under general rules conferring jurisdiction.18
The exclusive jurisdiction may give a court jurisdiction to hear the dispute or, alternatively, may provide a reason for another court outside theexclusive jurisdiction to decline to hear the case.
The territorial nature of IP rights is generally respected. In the EU, theBrussels Ia Regulation contains an exclusive jurisdiction rule for proceedings relating to the registration or validity of patents, trademarks,
designs or other similar rights required to be deposited or registered. In
those cases, the defendant can be sued only in the courts of the Member
State in which the deposit or registration has been applied for, has takenplace or is deemed to have taken place. Other courts than those specified
in the provision cannot deal with registration or validity matters. This
exclusive jurisdiction rule applies regardless of whether the registration
or validity issues are raised by an action or as a defense.19 In Australia,
such exclusive jurisdiction, which relates to validity and infringement
issues, is provided in IP statutes.
Jurisdiction over contract

In the context of IP contractual disputes, the defendant may inter alia besued at the place of performance of the obligation in question. Parties may
have stipulated the place of performance in their contract, failing which
the place of performance is, under Brussels Ia Regulation Article 7(1)(b),“in the case of the provision of services, the place in a Member State where,
under the contract, the services were provided or should have been provided.” If the dispute concerns IP infringement, the defendant may be suedin the courts of the place where the harmful event occurred or may occur.
42

III.

Which court is competent to decide the dispute?

The intersection between contractual disputes and issues concerning
validity or registration of IP rights over which courts have exclusive jurisdiction is a complex and developing area of the law, and decisions arebeing made on case-by-case basis.
Example 1: Transfer of trademark rights covering different States
A trademark is registered by Party A in States X, Y and Z andtransferred to Party B, a company having its main place of businessin State W. Party B, the registered trademark owner, initiates court
proceedings in State X claiming trademark infringement. The alleged
infringer, Party C, having its residence in State Y, claims that thetransfer from Party A to Party B is invalid.
Example 2: Dispute arising out of a patent license
agreement and question of patent validity
Party A and Party B entered into a license agreement covering aportfolio of patents. Over time those patents expired, except for one
patent in State Y. Party A initiates proceedings in State X, claimingthat it no longer has to continue paying royalties to Party B. Party B
argues that the dispute is outside the jurisdiction of State X, as it
concerns the validity of a patent in State Y. Party A argues that the
dispute does not concern the question of validity but rather the scopeof the patent, which the parties had agreed should be determined by
the court of State X.20

D. Is the court not an appropriate forum?

Forum non conveniens

In some jurisdictions, in particular common law countries, even if a court
is competent to hear a dispute, it may nevertheless decline to hear it on
the basis that it is clearly an inappropriate forum.
The court may decide to stay the proceeding permanently or for a specified
time. The test to be applied is determined by the national law and may
be, for example:• Is the court a “clearly inappropriate forum”?
• Are the proceedings oppressive or vexatious, or an abuse of process?
• Is another court the “natural forum” or a “moreappropriate forum”?

43When Private International Law Meets Intellectual Property Law – A Guide for Judges

Considerations that will be relevant include:• whether there are parallel proceedings on foot – simultaneous
proceedings might give rise to undesirable outcomes such asinconsistent judgments;• whether relief is available in a foreign court;• which law governs the dispute; and• the location of the parties, witnesses and damage.
Note that most civil law systems, including the EU (Brussels Ia Regulation),
do not adopt the forum non conveniens doctrine; instead, they rely on statutethat fits the limits of international jurisdiction or, alternatively, addressinternational jurisdiction mirroring their internal rules.

E. Which court within a State has jurisdiction todecide the dispute?
Whether a court is competent to hear a dispute may not be only a PIL
question, but also a question of which courts within a State are competentto hear the dispute. A State may have multiple courts, not all of which havethe same jurisdiction to decide disputes or grant remedies.
It is important to consider both the IP statute and any statute that governs
the jurisdiction of the court to determine which court has jurisdiction todecide the dispute. IP statutes generally confer jurisdiction on particular
courts. Some issues, such as validity and registration, may only be able tobe determined by specified courts. National laws or practice may govern
the determination of associated issues. If the specified court is unable
to determine all associated issues, it will be necessary to determine andseparate the issues early in the proceedings. Where the issues that arise
are not questions that must be decided by a specified court and the court
has general jurisdiction, all matters can be dealt with in a single action.
Some States may have conferred jurisdiction on specialized IP courts. Some
States may have conferred jurisdiction in IP cases on more than one classof court, for example federal and state or provincial courts. Depending on
the laws of the State, discretionary factors may be applied to determine
which is the appropriate court to decide the case.

44

IV.

Which laws does the court apply?

IV. Which laws does
the court apply?

45

Having determined jurisdiction, the next issue thecourt faces in cross-border IP cases is determining
the law applicable to the case: which State’s
substantive law is to be applied by the court hearing
the case? Determining the applicable law boils down
to choosing between different bodies of law, which
involves a consideration of the national law of thecourt (particularly mandatory rules), PIL principles
and the parties’ own choice of law.
This chapter identifies the points of consideration
for a court when making this determination.
Although it attempts to offer a neutral approachto the issue, courts should be aware that nationalrules may interact with this process. It should also
be noted that some steps in this process may overlap
with points considered in determining jurisdiction.
The guidelines provided here apply to issues
related to substance; if the subject matter is merely
procedural, the court will apply the law of the forum(i.e., its procedural law).

IV.

Which laws does the court apply?

A. The framework
The globalization of trade, digitization (including of the means of dissemination) and the use of intermediaries related to these developments raisecomplex questions regarding the applicable law.
When a court with jurisdiction to decide the dispute is confronted with aforeign element, the court will have to go through a multiple-step process
to determine the law applicable to that part of the case.

B. The process of determining the applicable law –a multiple-step process
Chapter II sets out a number of international and regional instrumentsthat provide some uniform applicable law rules for IP disputes. Endeavors
to provide uniform rules may in time lead to the adoption of new international rules on the law applicable to IP disputes, but there is not as yet any
comprehensive international treaty in place in this regard.
This chapter will aim to outline a rational approach to dealing with cases.
This should, where possible, remain disconnected from national reasoning. In other words, this chapter intends to provide a neutral analytical
approach or method which judges and practitioners in many different
States may use. However, courts should be aware that this approach may
be made inapplicable or limited by specific national rules relevant totheir jurisdiction.
The chapter provides a hands-on approach that a court may apply in its
search for the applicable law to the case. It should be noted, however, that
this practical approach may deviate from the approach found in moretheoretical textbooks on the subject. Furthermore, while the approach ispotentially relevant to, and can be applied in, any field of law, the discussion
here will only focus on its application to IP law.

47

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Figure 6
The multiple-step approach for deciding which law to apply

Factualsituation

Legal
question

Characterization

Overriding
mandatoryrules

Choice oflaw rules

Parties’choiceof law

Applicablelaw and its
application

Step 1: Translating the factual situation into legal questions

Factualsituation

Legal
question48

An initial step is to translate the presented factual
situation into plain legal questions.
It is important that a court identifies all legal questions to be answered.

IV.

Which laws does the court apply?

Deducing the specific legal questions of a claim and counterclaim mayseem straightforward but it is not uncommon that in sketching theconcrete factual framework specific to the case, parties overlook preliminary issues which need to be answered before deciding on the claims/
counterclaims as such.
ExampleParties introduce a software dispute where an employer
has allegedly “stolen” an idea from an employee employedabroad. The employer asserts that the work was createdduring “working hours” by the employee while working for theemployer. The essential preliminary question, whether what
has been taken is an idea (which is not protected IP) or the
expression of an idea (which is), is not raised by the parties.

The following legal questions can be identified:• Is the expression of the idea in the given format protectable?
• What is the relevant copyright subject matter?
• What is the legal relationship between the parties?
• Who owns the initial title?
• Was the title transferred rightfully?
Step 2: Characterization

Legal
question

This step may have already been covered in the
court’s assessment of its competence to deal witha case. However, the court should once again
Characterclearly identify the underlying legal issues andizationallocate each legal question to an establishedchoice of law category. In practice, the differencein characterization between applicable law andjurisdiction may be a grey area, with the basis for identifying jurisdiction
overlapping with the issue of which law to apply.
It is very likely that the legal question will be capable of being characterizedunder a separate and distinct choice of law category which may lead to acorresponding distinct choice of law rule in the next step of the process.
Legal questions in IP cases may fall within various choice of law categories:
49

When Private International Law Meets Intellectual Property Law – A Guide for Judges• validity• ownership and transferability of rights• contract• tort (which may include infringement of an IP right)• secured interest.
When identifying the legal issues underlying the legal question(s), theproblem will arise as to which body of law should be applied.
The appropriate approach will depend on the national body of law of
the court.
ExampleThe format of the expressed idea may be part of a different
legal field in different jurisdictions (e.g., a database may
be covered by copyright in one country and a sui generis
protective regulatory framework in another country).

The process of identifying and characterizing the legal issue may be approached in various ways:• Lex fori – the law of the forum. For this approach the court will
apply its own national law to identify the legal issue. It should be
noted that this approach is most commonly applied.
• Lex causae – the law applicable to the substance. For this approach
the judge will have to apply the actual body of law applicable to thelegal question, which could be a foreign law. This approach implies
a preliminary determination of the applicable law.
• Autonomous characterization by regional or international rules.
It is possible that regional or international rules require an
independent characterization which takes into account theirregional or international nature.
Characterization may require a fragmentation of each legal question into
separate issues governed by different rules on the applicable law. Thus,
the first step of translating the factual situation into legal questions,which could be raised as a preliminary issue, plays an important role inthe characterization process.

50

IV.

Which laws does the court apply?

ExampleWith regard to the alleged infringement by the employer of theemployee’s IP right, the following preliminary questions may have tobe resolved before the main legal question of alleged infringement
is decided:
Preliminary issues
Characterization of the relationshipbetween the parties

Employment law

Separate agreement between
the parties?

Contractual law

Protection of the subject matter?

Copyright law

Conditions of transferability of
the copyright

Copyright law

Main legal issues
Infringement of the copyright?

Copyright law

What damages should be awarded?

General law (absent specificprovision in the applicable
copyright law)

Step 3: Overriding mandatory rules and identification of
choice of law rules

Characterization

Overriding
mandatoryrules

Choice oflaw rules

In general, overriding mandatory rules can be
identified as rules of such political, social or economic importance or significance to the public
interest that they cannot be set aside despite theinternational nature of the dispute. The sourcesof overriding mandatory rules are varied. They
can be identified as such in a statute, but sometimes their status as mandatory rules stems fromcourt interpretation.

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When Private International Law Meets Intellectual Property Law – A Guide for Judges

Overriding mandatory rules override choice of law rules and require therules to be applied irrespective of the law that would otherwise be applicable. In the absence of overriding mandatory rules, the applicable law
will be determined according to choice of law rules.
Choice of law rules regulate the applicable law issue but not the legal
questions as such. They will direct the judge to the applicable law to be
used to resolve the identified legal questions and as such decide on theclaims and counterclaims made.
Choice of law rules again make use of connecting factors as an essential
element directing the court to the applicable law. These connecting factors
can be either legal or factual.
Some general guidelines are presented below, but bear in mind that theseguidelines may not always apply and that national IP law and/or international/regional rules of law may indicate a different connecting factor. The
connecting factors identified below are merely illustrations.
In the EU, the main connecting factor in IP law, particularly in an IP
infringement case, is the territory for which protection is claimed (lexloci protectionis).
ExampleShould an Austrian copyright holder initiate an infringement case in
France regarding an infringement which took place in France, theapplicable law to be applied on the conditions of the infringement
will be French copyright law on the basis of Article 8.1 of the Rome II
Regulation (“The law applicable to a non-contractual obligation
arising from an infringement of an intellectual property right shall be
the law of the country for which protection is claimed”).

In common law countries, the court will usually apply the lex loci delicti– the law of the place where the wrong was committed – in IP infringement cases. This is the same rule that is applied by Australian courts fordetermining the choice of law for a tort. In the case of an IP action, thiswill mean that the law that is chosen is the law of the place where infringement occurred. Applying the lex loci delicti to the example in the previous
paragraph would also result in the application of French copyright law.
Although lex loci protectionis and lex loci delicti are different from a doctrinal
point of view, the practical outcome of the two approaches is largely similar.
52

IV.

Which laws does the court apply?

For specific issues, other choice of law rules might apply:• Regarding the ownership and transferability of an IP right, adistinction may be made between registered and non-registeredrights. In the case of non-registered rights (e.g., copyright) two choiceof law rules can apply: the law of the creator’s “principal home” or,where the work was created under a contractual relationship, the lawthat applies to the contract. There are also two choice of law rulesthat can be applied to registered rights: the law applicable to thecontract where a registered work was developed under a contractual
relationship or the law of the State of registration. As for the validityof registered rights, it is the law of the State of grant or registrationthat should apply. In a number of countries, lex loci protectionis will
be applied not only to infringement but also to ownership.
• Regarding contractual issues, the principle of party autonomy
should prevail (see part IV.B.4 below).
• Regarding the use of IP as a security right, the choice of law rules
are more complex and diverse.
Example: A secured interest in IP
Party A, a pharmaceutical company located in State X, borrows
money from Party B, a financial institution located in State Y, anduses its patent portfolio as collateral. The agreement is concludedin State Z. When Party A fails to meet its loan obligations, Party B
seeks to foreclose on the collateral. Party A argues that Party B failed
to properly perfect its security interest in the collateral and therefore
should not be entitled to foreclose on the collateral. Which law
governs the creation and enforcement of the security right?

The Model Law on Secured Transactions developed by the United Nations
Commission on International Trade Law (UNCITRAL)21 provides different
choice of law rules for the proprietary aspects of a security right in IP and
for the contractual aspects.
For the proprietary aspects, Article 99 of the Model Law provides thatthe law of the State in which the IP is protected governs the creation,effectiveness against third parties and priority of a security right in IP.
The article also provides an alternative way to create a security rightin IP and make it effective against certain third parties, according towhich the secured creditor may also rely for these purposes on the lawof the State in which the grantor is located.22 Enforcement of a security
53

When Private International Law Meets Intellectual Property Law – A Guide for Judges

right in IP is also governed by the law of the State in which the grantor
is located.
The Supplement on Security Rights in Intellectual Property developed by
UNCITRAL discusses various options and their comparative advantages
and disadvantages.23 The options include: (1) applying the law of the grantor’s location; (2) applying the law of the State in which the IP is protected(lex protectionis or lex loci protectionis) to a security interest in IP; or (3)based on a combination of the first two options, referring some issues tothe law of the grantor’s location and other issues to the law of the State inwhich the IP right is protected.
For the contractual aspects, Article 84 of the Model Law provides that theparties to a security agreement (the grantor and the secured creditor) are
free to choose the law applicable to their mutual rights and obligations
arising from their security agreement. If the parties do include a choiceof law clause in their contract, then as a general rule that will be the lawthat is applied. The property aspects of a security agreement are, however,outside the scope of freedom of contract.
Step 4: Parties’ choice of law

Choice oflaw rules

Parties’choiceof law

Often parties agree on the law to be applied to thedispute. This agreement could be based on an existing contractual understanding (ante-factum) oron an agreement reached between the parties after
the issue in dispute occurred, before or after legal
proceedings were initiated (post-factum).

If parties agree on the applicable law, the court should apply this law, except
in cases where party autonomy is limited, in particular by the operation ofoverriding mandatory rules. The extent to which parties are able to agree
upon the law to be applied may vary between jurisdictions.

54

IV.

Which laws does the court apply?

ExampleGiven the territorial nature of IP rights, issues of validity regarding anational trademark registration are typically governed by the law of
the State of registration. Parties will thus not be entitled to choose a
different law with regard to validity.
In this context, to decide whether the parties’ choice of law clause or
agreement is valid, a judge may need to apply the law of the countryof registration. If the country of registration prescribes that its own
law must apply, parties are prohibited from agreeing on a different setof rules. The judge may already have decided this issue at an earlier
step in the multiple-step process, in considering whether overriding
mandatory rules apply.

If, in a contractual relationship, a party contests a choice of law clause, thecourt should investigate whether that clause is valid between the parties,
particularly within the context of the specific IP issue to be decided upon.
To answer that question, the court will have to refer to the applicable lawof the contract, unless the choice of law clause at issue specifies a different
applicable law.
Example: Bad faith registration in different trademark registers
A trademark has been registered in States X and Y. A resident ofState Y alleges that this registration is in bad faith.
The parties in this dispute may have reached an agreement on
the applicable law. After identifying the legal question (i.e., is thetrademark registration in bad faith?) and characterizing the legal
question (as one pertaining to trademark law), the court will apply
the choice of law rules to decide the validity of the choice of law
agreement. These rules may indicate a different applicable law thanthe one chosen by the parties. Regarding a trademark registration,
the applicable law may be the law of the State of registration. If thislaw prohibits parties from agreeing on a different applicable law, thecourt should hold the choice of law agreement invalid. (Note thatthe court may already have decided this issue when considering theapplication of overriding mandatory rules.) If the law of the State ofregistration does not prescribe that its law must apply, parties may
agree on a different set of rules and their choice of law agreement will
be valid.

55

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Example: Dispute whether a work is protectable by copyright
In a dispute as to whether a work is copyright protectable, the parties
have reached an agreement on the applicable law. After identifying
the legal question (i.e., is the work protectable?) and characterizing
the legal question (as one pertaining to copyright law), the court will
apply the choice of law rules in order to decide the validity of the
choice of law agreement. Here, this could be the law of the creator’s“principal home” (which could be the creator’s “domicile,” “residence”
or “habitual residence”). If this law prohibits parties from agreeing
a different applicable law, the court should hold the choice of law
agreement invalid. (Note that the court may already have decided thisissue when considering the overriding mandatory rules.) If the law of
the creator’s “principal home” does not prescribe that its law must
apply, parties may agree on a different set of rules and their choice oflaw agreement will be valid.

Continuing with the example of the dispute as to whether a work is protectable by copyright, figure 7 presents the decision-making process graphically.

Figure 7
Deciding the validity of the parties’ agreement on choice of law
Characterization =copyright law

Choice of law rules of theforum indicate that(for example) the law of
the creator’s “principalhome” applies

Parties’ choice of law

56

Valid = allowed by theapplicable law

Invalid = prohibited by theapplicable law

Applicable law =chosen law

Applicable law = law of thecreator’s “principal home”

IV.

Which laws does the court apply?

The EU Rome II Regulation does not allow for party autonomy for non-contractual obligations arising from IP infringement, i.e., it does not allow
parties to choose the applicable law in such cases. It preserves the widely
acknowledged principle of the lex loci protectionis, according to which
the law of the country for which protection is claimed should govern theinfringement of an IP right. With regard to the infringement of a unitary
EU IP right, the applicable law should be the law of the State in which theact of infringement was committed, if the question is not directly addressedby the uniform rules of the relevant EU instrument.
Step 5: Application of the applicable law

Choice oflaw rules

Parties’choiceof law

Applicablelaw and its
application

The above multiple-step process determines the law
applicable to the dispute. A court may neverthelessface the practical problem of a lack of information
about the foreign law that it has decided to apply.
ExampleAfter applying the multiple-step process, a Spanish
court determines that the law applicable to a patent
license is Russian (patent) law.

Such problems may be solved in different ways depending on the way
foreign law is treated under the court’s specific legal system:• Iura novit curia: In systems applying this approach the court ispresumed to know all laws, even foreign laws. It is considered toacquire the relevant laws and knowledge thereof. Foreign law isconsidered part of the (domestic) law and not a fact that should be
addressed by the parties. Some legal systems allow for the court
to request the assistance of the parties to the case. Some regional
systems have established working tools to acquire the relevant
information. And some countries permit the court to apply its
national law if the relevant information on foreign law cannot be
acquired, but this option should be applied restrictively.
• Responsibility of the parties to inform the judge of the relevant
rules in foreign law to be applied. Foreign law is considered as a57

When Private International Law Meets Intellectual Property Law – A Guide for Judges

factual element and should be proven as such. In most common
law countries, evidence of the content of foreign law can be
adduced by way of expert evidence or by tendering copies offoreign statutes. The court may be required to decide between
conflicting expert opinions on the law. While the content of foreign
law is a question of fact, once that fact has been ascertained, theapplication is a question of law. As with other matters of fact, if
parties do not sufficiently prove the content of foreign law, thecourt may apply the presumption that the national law applies.

C. Issues in the application of PIL to IP regarding theapplicable law
A court may face various situations in applying the multiple-step process.
It is beyond the scope of this Guide to clarify every situation that a court
might encounter when applying the steps described above. Renvoi andpublic policy are two mechanisms worth particular mention.
Renvoi

It is not uncommon when applying the multiple-step process that theforeign choice of law rules refer the court back to the law of the forum. In
such a situation the court may find itself in a vicious circle. The theory of
renvoi aims to break this circle by dictating that the court should halt its
search for the applicable law after the first renvoi.
ExampleA French court, after applying its multiple-step process, decides thatit should apply a Nigerian IP law, and this law would (based on the
choice of law rules) direct the judge back to the application of Frenchlaw. The judge should halt after this redirection and apply French law.

In most international and regional instruments, renvoi is prohibited. For
example, Article 8 of the HCCH Principles states: “A choice of law does notrefer to rules of private international law of the law chosen by the parties
unless the parties expressly provide otherwise.” Similarly, Article 20 of theRome I Regulation provides: “The application of the law of any country
specified by this Regulation means the application of the rules of law inforce in that country other than its rules of private international law, unlessprovided otherwise in this Regulation.”

58

IV.

Which laws does the court apply?

Public policy (ordre public)

Since the choice of law rules are abstract, it is possible that applying themultiple-step process would result in the application of laws that areincompatible with the public policy of certain States. Hence, the public
policy exception, as an escape device, allows a court to avoid applying
the applicable foreign law whenever the substantive content of that law
is sufficiently objectionable. The public policy exception may pertain to
fundamental values – morality and justice, such as human rights, or may
reflect an approach to the permissible scope of IP protection, for example,
as to what is considered a patentable invention (e.g. isolated human genes),or reflect a national policy on scientific research and creative activity. In
the event of the existence of such a public policy exception, the law thatwas supposed to be applicable pursuant to the choice of law rules will be
set aside by the court.
It should be observed that the way in which a balance is achieved between
IP and public policy considerations varies among States, and that the
precise balance is also subject to political, economic and social change.
This, in turn, may affect the way in which the judge applies those factors
to the specific facts of the case.

59

V.

How can a judgment be recognized and enforced in another State?

V. How can a judgment
be recognized andenforced in another State?

61

Where a court has decided that it has jurisdiction
and has decided a dispute according to theapplicable law, further questions may arise as towhether and how that decision can be recognizedand enforced in another State. Such questions will
frequently arise where the defendant against whom
a judgment has been ordered is located in anotherState or has assets located in another State.
There are two sets of courts involved insuch situations:• The court that made the judgment (the courtof origin). This court may have considered the
difficulties that a party may have in enforcing its
judgment in another State.
• The court of the State that is requested torecognize or enforce the judgment of the court oforigin (the court addressed).
This chapter of the Guide considers the PIL
principles that the court addressed should apply
in deciding whether to recognize and enforce aforeign decision.

V.

How can a judgment be recognized and enforced in another State?

Figure 8
How can a judgment be recognized and enforced in another State?
Is my court bound by any international orregional instruments?
In the absence of aninternational or regional
instrument, national rules
will determine whether or
not a foreign judgment
may be recognized orenforced.

No

Rules on recognition
or enforcement in therelevant instrument
should be followed.

Yes

Does the judgment fulfill the requirements
for recognition or enforcement of
the court addressed?

No

Yes

Has the judgment met oneof the grounds for refusal?

No

Yes

Recognition or enforcement
will be refused

Recognition or enforcement
will be executed

A. Recognition and enforcement offoreign judgments
A distinction should be made between recognition and enforcement. In
its broadest meaning, recognition includes all legal effects of a judgment,
including its binding effects on subsequent litigation (res judicata or preclusive effects). Enforcement is only possible in situations in which theforeign judgment is enforceable in the State of origin and the need arises
to adopt enforcement measures in the requested State.
Two scenarios can be used to illustrate the issues that arise.
Example 1: Recognition of a foreign judgment
A court in State X has decided that as between Party A and Party B,
Party A was the author of a copyright work and is therefore the owner.
Party B brings proceedings in a court in State Y seeking a declarationthat Party B was the original author and is therefore the owner of the
copyright work worldwide. Party A opposes the declaration on thebasis of the judgment given by the court in State X.
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When Private International Law Meets Intellectual Property Law – A Guide for Judges

Example 2: Enforcement of a foreign judgment
A court in State X has decided that Party A infringed the patent ofParty B and orders that Party A pay Party B a substantial sum ofdamages. Party A is located in State Y and has no assets in State X.
Party B seeks to enforce in State Y the judgment given by the courtin State X.

1.

Recognition of foreign judgments

The question that arises in Example 1 is the recognition of the decision of
the court in State X (the court of origin) by the court in State Y (the court
addressed). Recognition implies that the facts and legal relationships
which have been decided upon by a foreign court are recognized by the
court addressed.
The general principle of recognition is that there should not be relitigationof the same issue between the same parties. Where an issue has been
determined in a foreign court and the same parties seek to relitigate itin another jurisdiction, the court may be asked by one of the parties to
accept the judgment of the foreign court on the grounds of res judicata or
issue estoppel (claim or issue preclusion). If it can be demonstrated thatthe two States apply different laws to the issue, that may be a reason for
not recognizing the foreign judgment in certain jurisdictions. Otherwise,international comity and the general principle outlined above will lead torecognition of the foreign judgment.
Applying this to Example 1, the court in State Y may find that an issue
estoppel applies to the question of the identification of the original authorof the copyright work. However, in relation to ownership it may be that,
depending on the circumstances, an issue estoppel does not apply, as a
copyright work may have different owners in different jurisdictions.
2.

Enforcement of foreign judgments

The question that arises in Example 2 is the enforcement of a foreigndecision. Enforcement takes recognition a step further in that the judgment of a foreign court will have the same effect in the State where it is
to be enforced as in the State where it was decided, and the court of therequested State will then take measures to ensure the compliance withthe judgment.

64

V.

How can a judgment be recognized and enforced in another State?

The possibility to enforce a foreign judgment normally requires a previous declaration of enforceability by the court of the requested State. In
particular, the grant of the enforceability is typically subject to a specificprocedure, usually referred to as exequatur in some civil law jurisdictions
and registration in some common law jurisdictions. It should be noted thatthe procedure for recognition and enforcement of a foreign judgment isgoverned by the law of the requested State.
In both examples, PIL will guide the court in State Y in the recognitionand enforcement of the judgment made in State X.

B. Requirements for recognition and enforcement
When a court is requested to recognize or enforce a foreign decision, it
first needs to consider what PIL rules are to govern the decision to enforce
the foreign judgment.
• The court may be required to apply PIL rules established in aninternational or regional treaty.
• Should no international or regional instrument be applicable, thePIL rules regarding recognition and enforcement may be governedby State law or statutes. For example, in Australia, there is asystem for the registration of judgments of certain countries; in
Belgium, Articles 22 and following of the Belgian Code on Private
International Law apply.
• In common law States, the rules may be governed by thecommon law.
In each set of the above PIL rules, the court addressed does not examine
whether a foreign decision had merit or was a correct application of legal
principles. There are only limited grounds for exception to this policy onwhich the judgment may not be recognized or enforced, such as fraud or
public policy, which are discussed below in part V.B.2.
Generally, in addition to requiring foreign judgments to be enforceable
in the State of origin, a court will only recognize and enforce a foreign
judgment if certain other conditions are met.
First, the court of origin exercised “international jurisdiction,” meaningthat it had jurisdiction to hear the dispute. In determining the “international jurisdiction,” in some States the court addressed applies its own
65When Private International Law Meets Intellectual Property Law – A Guide for Judges

internal jurisdiction rules, while in others it applies the rules of the Stateof origin, and in yet others it applies special rules that the requested State
has created for the particular purpose. In some States, the lack of “international jurisdiction” of the court of origin is regarded as a ground for refusal.
Second, the decision was final and conclusive. Most jurisdictions require thedecision to be final and conclusive. This means that the same controversy
cannot be litigated again between the same parties in the court of origin.
It does not necessarily mean that all appeals from the decision have been
finalized, but in practice the court addressed may stay an enforcement
proceeding if there is an appeal that has yet to be finalized. As a whole, suchjurisdictions will not recognize provisional orders or interim decisions.
Third, the decision was on the merits. Mere procedural decisions arenormally not recognized, because courts usually follow their domestic
procedural rules and will not be bound by another court’s decision basedon foreign procedural rules.
Fourth, the parties must be identical, that is, the court addressed will not
enforce a judgment where the parties before it are not the same parties as
in or privy to the foreign decision. However, it should be noted that there
are legal systems which allow the enforcement of a judgment against thelegal successor in title to a judgment debtor.
In certain jurisdictions, the judgment must have also awarded damages
for a fixed sum. This requirement means that:• The court addressed will not enforce a foreign judgment forunspecified damages. Rather, quantum of damages should havealready been determined by the court of origin.
• In some jurisdictions, a court addressed may not enforce a foreign
judgment that is not monetary, such as an injunction. However,some jurisdictions, including the EU, have adopted a more liberalapproach in which the court will enforce decisions that are clear
and specific, but not necessarily monetary or for a fixed sum. The
enforcement of cross-border injunctions within the European
Union has been the subject of detailed judicial consideration.
• In addition, courts in equity may have some ability to enforce a
non-monetary remedy.
However, even if the above conditions are met, the person against whom
the judgment is enforced may be able to raise a defence so that the court66

V.

How can a judgment be recognized and enforced in another State?

addressed will not enforce the foreign judgment. Those grounds are discussed below in part V.B.2.
1.

Reciprocity, including the statutory approach and registrationof foreign judgments

The law of the requested State may provide specifically for the enforcement of judgments of the courts of certain States. This is done by meansof the statutory approach. More specifically, some common law States, as
stated earlier, have a system for the registration of judgments of certain
courts of a limited number of foreign States for the purpose of enforcing
foreign judgments.
The Australian Foreign Judgments Act 1991 (Cth) is one example. Generally,a State which provides reciprocal treatment of Australian judgments will be
proclaimed to be on that list. The judgments that may be registered under
this system are broader than at common law, and include interlocutory
judgments and non-fixed sum judgments. The party seeking to enforce a
judgment must register it with the State or Territory Supreme Court, andmay be required to notify the defendant.
Once a judgment has been registered, the foreign judgment is deemed
to have the same force and effect as a judgment of the Supreme Court.
However, the defendant may in certain circumstances seek to have theregistration of the judgment set aside. In addition to the absence of thestatutory equivalent of “international jurisdiction,” the grounds on which
registration may be set aside are discussed in part V.B.2 below.
A similar approach – requiring reciprocity –may apply in other jurisdictions, mainly of civil law nature, but it is left to the court of the State
addressed to verify whether reciprocal treatment is granted by theState of origin. In other words, in those jurisdictions recognition andenforcement is limited to foreign judgments that are rendered by courtsof a State that has recognized or enforced judgments from the State
addressed, or that has the possibility to recognize or enforce judgmentsfrom the State addressed.
2.

Grounds for refusal

The grounds on which registration of a foreign decision may be set aside
and the grounds on which a court will refuse to recognize or enforce aforeign judgment at general law are similar. They may include the following:67

When Private International Law Meets Intellectual Property Law – A Guide for Judges• The judgment made was obtained by fraud.
• The defendant was not given natural justice/due process/fair trial
in the proceedings, for example the defendant was not provided
with notice of the proceedings.
• To enforce the judgment would be contrary to public policy. Notethat in the EU context, this ground for refusal is difficult to invoke
as the CJEU has held that the party alleging a breach of public
policy must have availed itself of all the legal remedies available inthe country giving judgment.24• The dispute has already been adjudicated differently in another Stateor in the requested State, giving rise to incompatible judgments.
Other laws of a requested State may allow the court to refuse enforcementin other circumstances.
If a statute purports to grant jurisdiction over IP validity or infringement
to the courts of that State, the question may arise whether the courts ofthat State would recognize or enforce a judgment of the court of anotherState purporting to decide a question under that statute.
ExampleIn Australia, the Patents Act 1990 (Cth) section 154 confers
jurisdiction on the Federal Court of Australia “with respect to mattersarising under this Act.” Absent an agreement between States or a
Convention conferring jurisdiction as to all matters arising undera statute, it is hard to see how there would be recognition of thejudgment of a court of another State as to, for example, validity of anAustralian patent.

In considering the language of the statute and the way in which the jurisdiction has been granted and is determined, there may be a question
whether a court is called upon to exercise that jurisdiction independentlyor whether it is acceptable to enforce the judgment of the court of another State. There may be public policy reasons for not enforcing a foreign
court’s judgment. In a contractual dispute, if damages for breach of contract depend upon the validity or invalidity of an IP right, it would be aninteresting question whether the contract would be enforced. Under the
HCCH Choice of Court Convention (which may not be applicable unless it
has been ratified or acceded to in the relevant jurisdiction), the Convention
continues to apply to the main claim (such as the payment of royalties),
but the ruling on validity will not be recognized or enforced.
68

V.

How can a judgment be recognized and enforced in another State?

Further complexities may arise if the IP right exists in one State but not theother and the judgment purports to have effect beyond the State of origin,for example a worldwide injunction for infringement of an IP right where
no such right has been granted in the requested State, or enforcement of
a judgment deemed to conflict with basic rights such as privacy or freespeech. These questions may import public policy considerations, for example if a class of patents has been excluded by statute in the requested
State, leading to a refusal of enforcement.
3.

International and regional instruments

Chapter II of this Guide refers to multilateral instruments dealing withthe recognition and enforcement of foreign judgments.
Regional recognition and enforcement treaties reflect an advanced level ofcooperation and mutual trust among the jurisdictions of a particular region.
For courts of EU Member States, a presumption exists that judgments ofthe courts of other Member States are in order, as specifically articulated
regarding civil and commercial matters in Chapter III of the Brussels Ia
Regulation. Under this Regulation, recognition and enforcement shall bedenied only if one of the grounds for refusal set out in the Regulation ismet. These refusal grounds are limited but mandatory: recognition andenforcement is manifestly contrary to public policy (ordre public) in theMember State addressed; or the defaulting defendant was not duly served
when the proceedings were instituted; or there are irreconcilable judgments
submitted to the court for recognition or enforcement.
Similarly, the Minsk Convention, the Montevideo Convention, the Las Leñas
Protocol, the Inter-American Convention on the Extraterritorial Validityof Foreign Judgments and Arbitral Awards, the Arab League Judgments
Convention and the Riyadh Convention also provide conditions for therecognition and enforcement of foreign judgments in another Contracting
State and the grounds for refusal.
At the international level, there is a newly-adopted international treaty
dealing with the recognition and enforcement of foreign judgments:
the Convention of 2 July 2019 on the Recognition and Enforcement of
Foreign Judgments in Civil or Commercial Matters (the HCCH Judgments
Convention), developed under the auspices of the HCCH. The Convention
explicitly excludes IP related judgments (Article 2(1)(m)) from its scope: forexample, judgments on validity and registration of registered intellectual69When Private International Law Meets Intellectual Property Law – A Guide for Judges

property rights, subsistence of copyright or related rights, or infringementsof these rights will not circulate under the Convention. Regarding contracts
relating to intellectual property rights, if judgments are based on generalcontract law and only indirectly concern intellectual property matters, such
judgments can circulate under the Convention, for example, a judgment
on a distribution or license contract which rules on the determinationof royalties due or on the breach of the obligation to pay these royalties.

70

VI.

Issues relating to administrative or judicial cooperation

VI. Issues relating
to administrative or
judicial cooperation71

In cross-border civil or commercial transactions
or disputes, difficulties can be encountered if the
defendant or a witness is domiciled or the evidence
is located outside the State where the proceedings
are initiated; if a foreign State issues the necessary
public documents; or if parallel proceedings arisingout of the same dispute are initiated in different
States. This is because each State has its own legal
and administrative systems. Closer cooperation
between the authorities of different States caneliminate obstacles deriving from the complexityof different national systems. The HCCH therefore
develops Conventions with the aim of facilitating
cooperation through different mechanisms.
These Conventions allow national administrative
bodies and courts to, among other things, collectevidence abroad, admit foreign public documents
and transmit documents for service abroad
more efficiently.
This chapter provides an overview of how suchmechanisms operate and gives examples of someStates’ current practices.

VI.

Issues relating to administrative or judicial cooperation

A. Collecting evidence abroad
Evidence is crucial to success in any civil or commercial dispute, including
those in relation to IP. The difficulties in identifying and collecting the evidence that is necessary to prove a claim can be magnified in cross-border
IP disputes if, for instance, key evidence is located outside the jurisdictionin which the proceedings are held.
The HCCH Evidence Convention

The HCCH Convention of 18 March 1970 on the Taking of Evidence Abroadin Civil or Commercial Matters (the HCCH Evidence Convention) was concluded to establish methods of cooperation for taking evidence abroad incivil or commercial matters. Conscious that legal systems around the world
vary as regards taking evidence, the Convention provides effective means
to facilitate the cross-border transmission of requests to obtain evidence.
Under the framework of the Convention, evidence can be taken (i) bymeans of Letters of Request, and (ii) by diplomatic or consular agentsand commissioners.
According to Chapter I of the Convention, a judicial authority of one
Contracting Party (the requesting State) may request, by means of aLetter of Request, a Competent Authority of another Contracting Party(the requested State) to obtain evidence which is intended for use in judicial proceedings in the requesting State. The judicial authority of therequesting State transmits the Letter of Request to the Central Authorityof the requested State. The latter then forwards the Letter of Request to theauthority competent for execution. The law of the requested State applies
to the execution of the Letter of Request.
Chapter II of the Convention allows diplomatic or consular agents andcommissioners to take evidence, subject to the relevant permission, where
necessary, of the appropriate authority of the State in which the evidence is
to be taken, and provided that the relevant State has not objected in whole
or in part to Chapter II. The agent or commissioner may take evidence,
insofar as the proposed actions are compatible with the law of the Stateof execution, and he or she may also have power to administer an oath ortake an affirmation. The taking of evidence shall as a rule be performed inaccordance with the law of the court before which the action is initiated,
unless the manner in which the evidence is sought to be taken is incompatible with the law of the State of execution.

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When Private International Law Meets Intellectual Property Law – A Guide for Judges

The application of the Convention is often discussed in connection withpre-trial discovery of documents – a procedure known to certain common
law countries which allows for requests for evidence to be submitted
after the filing of a claim but before the final hearing on the merits. The
Convention does not prohibit Contracting Parties from submitting a qualified exclusion in order to ensure that a request for pre-trial discovery of
documents is sufficiently substantiated so as to avoid requests whereby
a party is merely seeking to find out what documents might be in thepossession of the other party to the proceedings.
Contracting Parties are divided as to whether or not the Convention is
mandatory. Nevertheless, the Convention greatly facilitates taking evidence
abroad, streamlines the procedures and significantly reduces the time
taken to obtain evidence. Based on data collected by the HCCH, 55 percent
of Letters of Request are executed in under four months.

Figure 9
Procedure under Chapter I of the HCCH Evidence Convention

Letter of Request

Judicial authorityof requesting State(In some States, Letters of Request
are forwarded via a separate authority,
usually its own Central Authority)

Requesting State
Requested State
Central Authorityof requested State

Execution of request

74

Competent Authority
to execute the Letter of Request

VI.

Issues relating to administrative or judicial cooperation

Figure 10
Procedure under Chapter II of the HCCH Evidence Convention
using diplomatic or consular agents
Judicial proceedings
instituted in State of origin
State of origin
State of execution
Diplomat/consul
exercising functions inState of execution
May take evidence of…

With permission of…

witness
located in the State of execution

Competent Authority

Permission may not be required where:- witness is a national of State of origin, or- State of execution has formally declaredthat permission is not required

Figure 11
Procedure under Chapter II of the HCCH Evidence Convention
using commissioners
Judicial proceedings
instituted in State of origin
State of origin
State of execution
Commissioner
appointed to take evidence
May take evidence of…

With permission of…

witness
located in the State of execution

Competent Authority

Permission required in all cases, except
where State of execution has formallydeclared otherwise

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When Private International Law Meets Intellectual Property Law – A Guide for Judges

Taking evidence from witnesses located in a foreign State –national practiceFrequently in a cross-border IP dispute, witnesses will be located in aforeign State. The question then arises for the court as to how evidence
from those witnesses should be obtained. There are a number of options.
The most straightforward option is for the witness to travel to the locationof the hearing. This allows the witness to give evidence in the same way as
any other witness in the proceedings. It is usually preferable for a witness
to give evidence in person, particularly where the evidence given by thatwitness will be lengthy or where there are questions as to the credibilityof the witness.
However, there may be reasons why it is undesirable or not possible for awitness to travel. For example, in cases where evidence from a witness isanticipated to be very short, the costs of travel may outweigh the benefitsof giving evidence in person. A witness may also have medical reasons
preventing travel. Other options should then be considered.
Depending on the court rules, parties may need to obtain leave in order
to utilize these other options. In making a decision, the court should
consider whether justice would be better served by allowing a witness togive evidence using one of the alternative options.
First, a witness may give testimony by way of videoconference or audio link.
This can be facilitated through videoconferencing facilities or telephone.
Practical matters to consider include (among others):• compatibility of the equipment;• the need to test the video/audio link beforehand, to ensure thequality of the link;• time differences between the court and the location of the witness;• the need for interpretation services;• other people present at the location of the witness; and• the manner of administering the oath or affirmation.
Second, evidence from a witness may be taken in another State, either (a)by commissioning the examination of the witness overseas, either by thejudge or by another person appointed as an examiner, or (b) by issuing a
Letter of Request to a judicial authority in another State to take the witness’s evidence. The costs of each of these procedures should generally beborne by the parties. It may be necessary first to obtain permission for a
76

VI.

Issues relating to administrative or judicial cooperation

foreign judicial officer to administer an oath or affirmation in the foreign
State. A number of States do not permit foreign judicial authorities toadminister oaths, which means that it may be necessary to use the Letterof Request process established under the HCCH Evidence Convention, as
described above.
In Australia, a number of evidence statutes provide for the admission ofcertain foreign documents as evidence in Australian proceedings. For example, section 157 of the Evidence Act 1995 (Cth) provides for the admissionof evidence of a public document that is a judgment or another processof a foreign court, and section 69 provides for the admission of businessrecords. Section 34 of the Foreign Evidence Act 1994 (Cth) provides for theevidence of records of foreign business authorities.
In addition, IP law may itself include presumptions that apply to foreign
documents. For example, the Copyright Act 1968 (Cth) includes presumptions as to subsistence and ownership of copyright material on the basisof reliance on foreign certificates.
Furthermore, the parties may agree that, with the leave of the court, documents otherwise inadmissible be admitted by consent. These may include,for example, evidence taken in overseas proceedings and documents
produced pursuant to production or discovery orders in another country.
In the EU, similar, but not identical, provisions are provided in the
Evidence Regulation.25

Figure 12
Taking evidence from a witness located in a foreign StateCan the witness
travel to the court?

Is a witness locatedin another State?

Can the witness
give evidence byvideo or audio link?
Should thetestimony of thewitness be takenoverseas?

By the judge, orby another person
appointed as an
examiner?

By a foreign
judicial authority?

77When Private International Law Meets Intellectual Property Law – A Guide for Judges

B. Admission of foreign documents
In a cross-border IP dispute, it may be necessary for parties to tender foreign
public documents. These may include, for example, foreign judgments orforeign IP registrations.
The HCCH Apostille Convention – abolishing the legalization of
public documents

The HCCH Convention of 5 October 1961 Abolishing the Requirement ofLegalisation for Foreign Public Documents (the HCCH Apostille Convention)
facilitates the circulation of public documents executed on the territory of
one Contracting Party to the Convention and to be produced in any other
Contracting Party to the Convention (subject to the objection mechanism).
It does so by replacing the cumbersome and often costly formalities of afull legalization process (chain certification) with the mere issuance ofan Apostille.
Apostilles may only be issued by a Competent Authority designated by
the Contracting Party from which the public document emanates. The
relevant entity only authenticates the origin of the underlying public
document by certifying the authenticity of the signature on the document,
the capacity in which the person signing the document has acted and,
where appropriate, the identity of the seal or stamp which the document
bears. It does not certify the content of the underlying public document.
The Convention applies only to public documents, including “administrative
documents” such as the grant of patents or other IP rights.
The Convention does not make explicit reference to documents executedby inter-governmental and supranational organizations, for example thegrant of patents by the European Patent Office. The potential applicationof the Convention to these documents has been discussed by an HCCH
working group.
As the HCCH Apostille Convention is designed to abolish legalizationand facilitate the use of public documents abroad, it does not create arequirement for foreign public documents to be apostillized. This meansthat an Apostille is not needed where the domestic law of the State ofdestination has either further simplified or completely eliminated any
authentication requirements, or where certain treaties, agreements orother similar instruments eliminate or further simplify such authentication
requirements. In the field of intellectual property, this has been achieved by
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VI.

Issues relating to administrative or judicial cooperation

certain WIPO-administered treaties such as the Singapore Treaty on the
Law of Trademarks, the Trademark Law Treaty and the Patent Law Treaty.
Figure 13
Production of public documents abroad without the
HCCH Apostille Convention
The traditional legalization chain
Publicdocument
executedin theState oforiginFirst authentication(e.g., civil registry)

Secondauthentication(ministry of justice)

Fourthauthentication(consulate of Stateof destination)

Third authentication(ministry of
foreign affairs)

State of origin
State of destination
Fifth authentication(ministry of foreign affairsof State of destination)
For some States only

Publicdocument
ready to be
produced in
the State ofdestination

Figure 14
Production of public documents abroad with the
HCCH Apostille Convention
Simplified process under the HCCH Apostille Convention
Publicdocument
executedin theState oforiginOne-step process

Apostille
issued byCompetent
Authority inState of origin

State of origin
State of destination
Publicdocument
ready to be
produced in
the State ofdestination

Verification of apostilleusing register kept byCompetent Authority of State of origin

79When Private International Law Meets Intellectual Property Law – A Guide for Judges

C. Service of documents abroad
Service of judicial and extrajudicial documents on parties located abroad
is an important element of cross-border civil or commercial disputes, including IP disputes. It is an essential component of the right of defendants
to receive actual and timely notice of suit. In addition to the discussion
in part III.C.2 above, which concerned serving defendants in the context
of establishing jurisdiction in common law countries, there is an international convention coordinating the service of documents abroad among
its Contracting Parties.
The HCCH Service Convention

The HCCH Convention of 15 November 1965 on the Service Abroad of
Judicial and Extrajudicial Documents in Civil or Commercial Matters(the HCCH Service Convention) was concluded to simplify and expedite
the procedure for judicial or extrajudicial documents to be transmitted
from one Contracting Party to the Convention to another Contracting
Party for service in the latter. In practice, the Convention greatly facilitates and streamlines the transmission of documents for service
abroad, and significantly reduces the time needed to complete serviceof process abroad.
For the Convention to apply, the following requirements must be met:(i) a document is to be transmitted among Contracting Parties to theConvention for service (the law of the forum State determines whether or
not a document has to be transmitted abroad for service – the Convention
is of non-mandatory but exclusive application): (ii) an address for the person
to be served is known; (iii) the document to be served is a judicial or extrajudicial document; and (iv) the document to be served relates to a civil orcommercial matter. If all these requirements are met, the transmission
channels provided under the Convention must be applied exclusively,
except in the case of a derogatory channel.
The Convention provides for one main channel of transmission andseveral alternative channels. Under the main channel of transmission,
the authority or judicial officer competent under the law of the requesting
State (the State where the document to be served originates) transmits the
document to be served to the Central Authority of the requested State (theState where the service is to occur). The Central Authority of the requested
State will execute the request for service or cause it to be executed either(i) by informal delivery to the addressee, who accepts it voluntarily, or (ii)by a method provided for under the law of the requested State or (iii) by a
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VI.

Issues relating to administrative or judicial cooperation

particular method requested by the applicant, unless it is incompatible
with the law of the requested State.
The alternative channels of transmission are: consular or diplomaticchannels (direct and indirect); postal channels; direct communication
between judicial officers, officials or other competent persons of the Stateof origin and the State of destination; and direct communication between
an interested party and judicial officers, officials or other competent persons. The Convention entitles a State to object to the use of some of thesealternative channels of transmission.
The Convention acknowledges the strong connection between proper noticeand the defendant’s appearance. To this end, two key provisions protect
the defendant prior to the rendering of a judgment by default (Article 15)
and after a judgment by default is rendered (Article 16).
Figure 15
The main channel of transmission under the HCCH Service Convention

Requestto serve
documents

Forwarding Authorityof Requesting StateIn most States,
judicial authority/judicial officer

Requesting State
Requested State

Service

Central Authorityof Requested State
Serves documents itself orarranges for it to be served
Service on the defendantby electronic means

An example of national practice
In Australia, for example, under Division 10.4 of the Federal Court Rules,
a person in a foreign jurisdiction has only been validly served if:(a) the proceeding is one of the kinds listed in a table in Rule 10.42 (alist of types of proceedings with factors connecting the proceeding
to Australia);
81

When Private International Law Meets Intellectual Property Law – A Guide for Judges(b) the court has granted the party leave to serve the person – anapplication for leave requires the party to establish a prima faciecase for relief; and(c) the originating application is served either:(i) in accordance with a convention, the law of a foreign country,
or the HCCH Service Convention (Rule 10.43(2)); or(ii) if it was not practicable to serve the document in accordancewith (i) and if the document has been brought to the person’s
attention, the court may deem the document as served (Rule10.48); or(iii) if service was not successful on the person in accordancewith (i), the court may order that another method be used
(Rule 10.49).
Defendants may then submit to the jurisdiction of the court or may
challenge it.
Australia has signed a treaty with New Zealand which provides an exception to the above process. It has the effect that a person in New Zealandis served in the same way as a person in Australia – leave is not required.
In the EU, service in the Member States of judicial and extrajudicial documents in civil or commercial matters is governed by the Service Regulation.

D. Cooperation and coordination among courts
How to address parallel international proceedings arising out of the same
dispute has always been a controversial topic in private international litigation. Common law and civil law jurisdictions tend to deal with the issue
of international parallel proceedings in different ways – either throughthe deployment of anti-suit injunctions to restrain the pursuit of foreign
proceedings or through the application of the lis alibi pendens doctrine tosuspend or dismiss current proceedings.
It is generally recognized that the control of international parallel proceedings serves the following commonly identified purposes: acting asa preemptive corollary of the res judicata effect of foreign judgments;
promoting judicial efficiency; and promoting comity between courts. The
importance of regulating parallel proceedings in private international litigation has led to efforts at regional and international levels to harmonize
methods of dealing with international parallel proceedings.
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VI.

1.

Issues relating to administrative or judicial cooperation

Anti-suit injunctions

Within common law jurisdictions, a party may apply to the court for ananti-suit injunction to effectively restrain proceedings in a foreign court.
The injunction is designed to protect the jurisdiction of the local court andthe court’s processes, for example in cases where the foreign proceedings
may interfere with the pending local proceeding or the foreign proceedings
are vexatious and oppressive.
An anti-suit injunction is an extraordinary remedy and the power should
be exercised cautiously. While the injunction is issued with the aim ofrestraining persons who are party to the local proceedings, an anti-suit
injunction actually affects the court of another State.
2.

Lis alibi pendens

Lis alibi pendens is applied mainly by civil law jurisdictions. It requires acourt to stay (suspend) or dismiss proceedings if another court has been
seized first in proceedings involving the same cause of action between
the same parties.
The lis alibi pendens doctrine is commonly chosen in international andregional instruments. This means that if parallel proceedings on the same
subject matter between the same parties are brought in more than one
State, the court first seized has priority, and all other courts should deferto this jurisdiction. However, the HCCH Choice of Court Convention
deals with this issue differently. Article 6, which addresses non-chosen
courts, requires the non-chosen court to decline its jurisdiction in favourof the chosen court, whereas Article 5(2), which addresses the chosen
court, specifies that the chosen court is not permitted to decline to exercise jurisdiction on the ground that the dispute should be decided ina court of another State, even if the court of the other State was seised
first (lis alibi pendens).
The Brussels Regime normally requires that any court other than the
court first seized shall, of its own motion, stay its proceedings until
the jurisdiction of the court first seized is established. This applies
to situations where proceedings involving the same cause of action
and between the same parties are brought in the courts of different
Member States.

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When Private International Law Meets Intellectual Property Law – A Guide for Judges

The interaction between choice of court agreements and the lis alibi
pendens rules underwent changes during the revision of the Brussels I
Regulation. The Brussels Ia Regulation, which aligns with the mechanism
established in the HCCH Choice of Court Convention, gives priority to thechosen court of an EU Member State to decide on its jurisdiction, regardless of whether it is first or second seized, and any courts of other Member
States shall decline jurisdiction in favor of the chosen court if that court
has established its jurisdiction.

84

Glossary

Court addressed

The court that is asked to recognize or
enforce a judgment

Court of origin

The court that rendered the judgment

De lege ferenda

An expression referring to what the law
ought to be or may be in the future

Enforcement (of judgments) The application of the legal procedures of
the court addressed to ensure that a judgment-debtor obeys the judgment given by
the court of origin
Exclusive jurisdiction

The power that a court has to adjudicate acase to the exclusion of all other courts

Foreign State/other State

Any State other than the State hearing
the case

Forum non conveniens

The discretionary power of a court having
jurisdiction to stay or dismiss proceedings
if it considers that another court would bea more appropriate forum

Iura novit curia

The principle that the court knows thelaw. In systems applying this approach thecourt is presumed to know all laws, evenforeign laws

Lis alibi pendens

A legal doctrine that requires a court second
seized to stay or dismiss proceedings if anaction on the same cause of action is alreadypending elsewhere

Personal jurisdiction

The power that a court has to adjudicate
over the defendant85

When Private International Law Meets Intellectual Property Law – A Guide for Judges

Recognition (of judgments) A process by which the court addressed
gives effect to the determination of legal
rights and obligations made by the courtof origin
RenvoiA process by which the court of one State, inapplying foreign law, also applies the conflictof laws rules of that other State, which may
in turn lead the court to refer back to andapply its own law

Requested StateIn the context of the recognition and enforcement of judgments: the State in which
the court addressed is situated
In the context of collecting evidence abroad,the requested State is the State in whichevidence is requested to be obtained forintended use in judicial proceedings in therequesting StateRes judicata

A legal doctrine that bars re-litigation of
the same claims or issues

State of origin

In the context of the recognition and enforcement of judgments: the State in which
the court of origin is situatedSubject matter jurisdiction The power that a court has to hear and determine cases of a particular type or cases
relating to a specific subject matter
Territoriality of IP rights

86

The principle that IP rights do not extend
beyond the territory of the sovereign State
that granted the rights

Notes1.

For more information on ADR options for IP disputes, see the WIPO Arbitrationand Mediation Center: www.wipo.int/amc. See also Convention on the
Recognition and Enforcement of Foreign Arbitral Awards (New York, 1958).

2.

For the Commonwealth of Independent States: Convention on Legal Aid andLegal Relations in Civil, Family and Criminal Cases, adopted in Minsk on January
22, 1993.

3.

For the Organization of American States: Inter-American Convention on General
Rules of Private International Law, adopted on May 8, 1972.

4.

For the Southern Common Market (MERCOSUR), the Protocol on Judicial
Cooperation and Assistance in Civil, Commercial, Labor and Administrative
Matters, adopted in Valle de las Leñas on June 27, 19.

5.

Southern Common Market (MERCOSUR) Protocol of Ouro Preto, concluded on
December 17, 1994, in Ouro Preto.

6.

Inter-American Convention on the Extraterritorial Validity of Foreign Judgments
and Arbitral Awards, entered into force on June 14, 1980.

7.

Convention of the Arab League on the Enforcement of Judgments and ArbitralAwards, adopted on September 14, 1952.

8.

Riyadh Arab Agreement for Judicial Cooperation, adopted on April 6, 1983.

9.

Regulation (EU) No. 1215/2012 of the European Parliament and of the Councilof December 12, 2012 on jurisdiction and the recognition and enforcement of
judgments in civil and commercial matters (recast), OJ L 351/1, 20/12/2012,
pp.1-32. The Brussels Ia Regulation replaced the Council Regulation (EC)No 44/2001 of December 22, 2000 on jurisdiction and the recognition andenforcement of judgments in civil and commercial matters, OJ L 12, 16/01/2001,
pp.1-23 (the Brussels I Regulation), which in turn replaced the Convention of
September 27, 1968 on Jurisdiction and the Enforcement of Judgments in
Civil and Commercial Matters (the Brussels Convention). The Convention on
jurisdiction and the recognition and enforcement of judgments in civil andcommercial matters, signed on October 30, 2007, OJ L339, 21/12/2007, p.3 (the2007 Lugano Convention), which replaced the Convention on jurisdiction and theenforcement of judgments in civil and commercial matters, signed on September
16, 1988 (the 1988 Lugano Convention), applies to the European Union Member
States plus Iceland, Norway and Switzerland. As the 2007 Lugano Convention
is, in substance, largely similar to the Brussels I Regulation, a collective term
“Brussels Regime” is used to include all these instruments.

10.

Regulation (EC) No. 593/2008 of the European Parliament and of the Councilof June 17, 2008 on the law applicable to contractual obligations, OJ L 177/6,
4/7/2008, pp.6-16.

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When Private International Law Meets Intellectual Property Law – A Guide for Judges

11.

Regulation (EC) No. 864/2007 of the European Parliament and of the Council ofJuly 11, 2007 on the law applicable to non-contractual obligations, OJ L 199/40,
31/7/2007, pp.40-49.

12.

Council Directive 93/83/EEC of September 27, 1993 on the coordination ofcertain rules concerning copyright and rights related to copyright applicable tosatellite broadcasting and cable retransmission.

13.

CJEU, July 13, 2006, Roche v. Primus, C-539/03, and CJEU, December 1, 2011,
Painer v. Standard VerlagsGmbH, 2011, C-145/10.

14.

Regulation (EC) No. 1393/2007 of the European Parliament and of the Councilof November 13, 2007 on the service in the Member States of judicial andextrajudicial documents in civil or commercial matters (service of documents),
and repealing Council Regulation (EC) No. 1348/2000.

15.

CJEU, January 22, 2015, Hejduk, C-441/13.

16.

SOCAN v. Canadian Association of Internet Providers [2004] 2 SCR 427.

17.

CJEU, April 19, 2012, Wintersteiger, C-523/10.

18.

UKSC, Lucasfilm Ltd v Ainsworth [2011] UKSC 39.

19.

CJEU, July 13, 2006, GAT v. Luk, C-4/03. (However, the CJEU cases, 12 July
2012, Solvay SA v Honeywell, C-616/10; 15 November 1983, Duijnstee v Lodewijk
Goderbauer, C-288/82 and 5 October 2017, Hanssen Beleggingen BV v Tanja
Prast-Knipping, C-341/16 demonstrate the examples of disputes which are
not covered by exclusive jurisdiction for proceedings relating to registration
or validity.)20.

Chugai Pharmaceutical v. UCB [2017] EWCH 1216 (Pat).

21.

UNCITRAL Model Law on Secured Transactions, adopted in 2016.

22.

Under article 90, the grantor is located: (a) in the State in which it has its place ofbusiness (subpara. (a)); (b) if the grantor has more than one place of business, in
the State in which the central administration of the grantor is exercised (subpara.
(b)); and (c) if the grantor has no place of business, in the State in which the
grantor has his habitual residence (subpara (c)).

23.

See paras. 284-339 (www.uncitral.org/uncitral/en/uncitral_texts/security/ipsupplement.html). The Supplement, which was adopted by UNCITRAL in 2010,
was prepared with the assistance of WIPO, and recommendation 248 and therelevant commentary were prepared with the assistance of the HCCH.

24.

CJEU, July 16, 2015, Diageo Brands BV v. Simiramida, Case C–681/13; CJEU,
May 11, 2000, Régie nationale des usines Renault SA v. Maxicar SpA and Orazio
Formento, Case C-38/98.

25.

Council Regulation (EC) No. 1206/2001 of May 28, 2001 on cooperation
between the courts of the Member States in the taking of evidence in civil orcommercial matters.

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