18

Cross-border Injunctions to Preclude Defendants from
Infringing Intellectual Property Rights（*）
Industrial Property Right Expert Overseas Researcher: Asako Matoba

International injunctions can be issued in a legitimate manner in intellectual property right
infringement cases. However, there are quite many unsolved problems, such as the geographical scope of
an injunction and enforcement thereof, in addition to the issue of international jurisdiction that generally
becomes a problem in transnational intellectual property right infringement cases. Whether a court can
grant a cross-border injunction is not only related to whether the court has international jurisdiction.
However, discussion has been held on the issue of to what extent international jurisdiction is recognized, in
determing a demand for a cross-border injunction, particularly in Europe, due to the existence of theBrussels I Regulation and the Lugano Convention, on the premise that judgments rendered by courts
whose jurisdiction was based on the provisions set in said Regulation or Convention are relatively easily
recognized/enforced in other countries. The situation in the United States is different from the situation in
Europe. In this study, we first overviewed the cases in which a cross-border injunction could be sought, andthen considered cross-border injunctions by focusing mainly on international jurisdiction and the ways ofrecognizing/enforcing foreign judgments.

Ⅰ Introduction
Article 44 of the TRIPS Agreement(Agreement on Trade-Related Aspects ofIntellectual Property Rights)1 stipulates that “1.
The judicial authorities shall have the authority toorder a party to desist from an infringement,”
thereby obliging its members to develop domestic
law to make it possible to take an injunction
through the judicial authorities as an effective
measure against an infringement of an intellectual
property right.2 However, this provision does not
specifies such matters as the extent to which thejudicial authorities should have the authority to
grant an injunction.
Many studies have been conducted on thediscipline of international intellectual property
right-related cases, in particular, international
jurisdiction and the issue of recognition/enforcement of judgments in general, both inJapan and abroad in recent years.3 However, it
seems that there have been relatively few studies
focusing attention on a specific type of remedies,that is, international jurisdiction. Therefore, inthis study, we tried to consider a desirable
discipline of international injunction in intellectual
property right infringement cases. For thediscipline of international injunction, the issue ofinternational jurisdiction, that is, which country’s(*)

court can examine/determine the existence of
infringement of an intellectual property right, etc.,
is relevant, but beyond that, the rules ofenforcement of cross-border injunctions areimportant. Unlike the enforcement of monetaryjudgments such as orders to pay damages, that of
injunctions, which are non-monetary judgments,
seems to involve many unsolved problems.
Possible types of enforcement of cross-borderinjunctions are, firstly enforcement in a country
to which the court that has granted the injunction
belongs, and secondly enforcement of injunctions
or other measures in the countries other than the
country of the court that granted the injunction ormeasures.

Ⅱ Various Types of Transnational
Intellectual Property Right
Infringement Cases andBackground Thereof
1

Cases of Transnational Intellectual
Property Infringement

It is submitted that Europe and the UnitedStates, in the first place, differ in the types ofsituations on which courts and academics havediscussed whether a court can issue aThis is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2010 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in expression
or description of the translation. When any ambiguity is found in the English translation, the original Japanese text
shall be prevailing.

IIP Bulletin 2011 Vol.20● 1 ●“cross-border injunction” in intellectual property
right infringement cases, particularly, in patent
infringement cases. That is, what has mainly
attracted attention in Europe is an issue of
whether a court in country B can issue an
injunction against infringement of an intellectual
property right registered in country A. On theother hand, what has mainly been discussed in the
United States is about injunctions against the actsthat infringe U.S. intellectual property rights
outside the territory of the United States.
We can give some other sub-categories ofcases of cross-border intellectual property
infringement as well as those in the U.S. and in the
EU. Although the classifications are not exclusive
each other and might overlap in some cases, it
seems that the following four or five types oftransnational infringement can be assumed.
(1) Where a person based in country B
infringes a patent right registered incountry A in country A (ex. the GAT case)
The first type is the orthodox case of
infringement of country A’s patent right4 in the
territory of country A in which the base (oraddress) of the “infringer” is located in a country
other than country A (for example, country B). In
this case, if most of the infringer’s property is at
the place of its address, the patentee mightchoose to file a lawsuit to seek an injunction
against the infringement, etc. in the place of theinfringer’s address in consideration of conveniencein the subsequent enforcement stage. In that case,the court in country B can be required to examine5
the existence of infringement of the patent rightunder the law of country A, which is anothercountry, and to determine whether to issue an
injunction against the act of infringement incountry A.
On the contrary, if the patentee files alawsuit in country A, it is only necessary for the
court in country A to examine/determine
infringement of the patent right registered
therein. Therefore, there seems to be little
difficulty in that point. However, where an
injunction is issued after the infringement isfound, the way of enforcing the injunction against
the company in country B which does not haveproperty in country A6 can be a problem.
(2) Where multiple infringers individually
infringe any parallel patent rights incountries where the relevant patentrights have been registered (ex. theRoche Netherland case)

The second type is the case where, for X’s
parallel patents in multiple countries (for example,
country A, country B, and country C), Y1
individually infringes a patent right in country A,
Y2 individually infringes a patent right in country
B, and Y3 infringes a patent right in country C,
and Y1, Y2, and Y3 are companies that belong to
the same corporate group. X often wishes tobring one lawsuit against all infringers (Y1, Y2,
and Y3) to seek injunctions against infringementof all the patent rights, for example, before a court
in country A instead of starting multiple lawsuits
in multiple countries.
If such a lawsuit is filed, firstly it isnecessary to determine the existence ofinternational jurisdiction over infringement offoreign patent rights, that is, whether the court incountry A is found to have international
jurisdiction over a lawsuit against multiple
defendants including foreign companies. 7
Secondly, if the court in country A grants an
injunction, the way of enforcing the injunction, inparticular, against foreign companies will be anissue in the same manner as the first type oftransnational intellectual property cases.
(3) Infringement of a unified intellectual
property right in multiple countries
An example of the third type is the casewhere a Community trade mark is infringed in
multiple Member States of the European Union(E.U.). The Council Regulation on theCommunity Trade Mark 8 for Community trade
marks stipulates detailed rules. Therefore, it ispossible to say there are few interpretational
problems. However, there remain unclear points
concerning the geographical scope of an
injunction and its enforcement.
(4) Where it is not easy to locate the “placeof infringement”
The fourth type is the case where it is noteasy to locate infringement or the place of
infringement in a specific country. Cases ofinfringement of an intellectual property right in
an individual country through activities on theInternet and cases where multiple persons basedin different countries are involved in therespective part of elements that constituteinfringement of an intellectual property right areconsidered to fall under this type.
2

Infringement on the Internet
Some technical specificity of infringement on● 2 ●IIP Bulletin 2011 Vol.20

the Internet obliges us to deal with that type of
infringement differently from other types, forinstance, as to the way of regulating it,
enforcement of judgments, etc. The judgmentby the French Court of Cassation in Roederer9case will give us enough hints.
3

Background of Various Cases regarding
Transnational
Intellectual
Property
Infringement

As the background behind such difference intransnational intellectual property infringementcases, there are differences in systems ofintellectual property law and differences injudicial frameworks.
First of all, the cases discussed differ
significantly between in Europe and in the UnitedStates.
Cross-borderinjunctions
againstinfringement of foreign intellectual property
rights were lively discussed, in particular, in
Europe, due to the existence of the Brussels/Lugano regime for international jurisdiction andenforcement of foreign judgments.10 In fact, somecourts in European countries have granted
cross-border injunctions mainly within European
countries based on the understanding that courts
can examine/determine infringement of foreign
intellectual property rights to a certain extent
under said rules. Secondly, even within the E.U.,
handling of infringement cases can differ
depending on whether a right infringed is a
unified intellectual property right (within theregion) like a Community trade mark or a rightthat takes its stand on the principle of“territoriality” of intellectual property.
In the following sections, we will see an
overview of different intellectual property systems
and judicial frameworks for remedies regarding
infringement of intellectual property rights.

Ⅲ Legislation in the E.U.
1

Community Trade MarkIn the E.U., the situation differs between thelegal system for trademarks and that for patentrights. For trademarks, there is a Community-level
unified 11 trademark right system. It is theCommunity trade mark system 12 which isdisciplined by the Council Regulation on theCommunity Trade Mark.13
Community trade marks are to have equal
effect 14 throughout the Community. The
construction of some provisions of the Council
IIP Bulletin 2011 Vol.20

Regulation on Community Trade Mark, including
the article that stipulates that “a Community
trade mark court shall (……) issue an orderprohibiting the defendant from proceeding withthe acts which infringed or would infringe theCommunity trade mark,”are getting clarified by
the European Court of Justice (ex. Nokia case15,
Chronopost v DHL case16).
2European Patent

A system for unified rights throughout the
E.U. like Community trade marks has yet to beestablished in the field of patent. 17 Although
there is a system of “European patent” that isbased on the European Patent Convention ofwhich contracting states are not limited to theMember States of the E.U.,18 a patent obtained
through filing an application with the European
Patent Office is, in reality, nothing more than abundle of patent rights in multiple countries
which the applicant has designated at the time offiling.
The point that a European patent is not aunified right throughout the E.U. has a significant
meaning in terms of the trend of European patent
infringement lawsuits. It could be that, as long asa European patent is not a unified right, even if
multiple parallel patent rights that are based on
the European Patent Convention are concurrently
infringed, there is no need for the results of court
proceedings for infringements of those parallel
patent rights to be unified. In fact, for the casewhere multiple parallel patent rights obtained
through the European Patent Convention were
infringed respectively by multiple companies, theaforementioned preliminary ruling of theEuropean Court of Justice on the Roche
Nederland case presented an interpretation thatthe patentee cannot file a lawsuit for all
infringements with the court in the Netherlandson the basis of the provision of subjective joinderof actions in Article 6(1) of the Brussels
Convention.

Ⅳ Legislation in Each Country1

Member State of the E.U.—France

France is one of the Member States of the
E.U. As overviewed in the previous Chapter, thesituation differs between the field of patent rightand the field of trademark right. Therefore, cases
are overviewed below while dividing them into
patent right infringement cases and trademark● 3 ●right infringement cases.
2

Although whether to file such a lawsuit while
naming only an Internet service provider as thedefendant depends on the situation, according toProfessor Muir Watt, etc., people tend to filelawsuits mainly targeting Internet service
providers that have property in the country offorum or have made profits in the country offorum rather than targeting the possessors orcreators of marks or wordings that fall underinfringement. That is because it looks more
effective to stop infringement.22

Switzerland

Although Switzerland is not a Member
State of the E.U., it is a contracting state of theEuropean Patent Convention and is also acontracting state of the Lugano Convention on
Jurisdiction and the Enforcement of Judgments in
Civil and Commercial Matters 19 (hereinafter
merely called the “Lugano Convention”).
3

The United States

The United States is neither a contracting
state of the European Patent Convention like
Switzerland nor a contracting state of a convention
thatmutually
facilitates
therecognition/enforcement of foreign court judgments in relation
to many European countries like the Lugano
Convention. Consequently, there are problematic
situations that are different from those in France
and Switzerland in terms of judgments issuinginternational injunctions in intellectual property
right infringement cases and enforcement ofinternational injunction. The Voda v. Cordis case20
and court precedents thereafter attract attention.

(2) Effectiveness of injunctions
Even understanding infringements on theInternet as those that can be disciplined basicallyin the same manner as infringements in real world
without considering them to be completely
different,23 they also have differences. One of thedifferences is a technical difference concerning
infringement. Due to the structural and/or
technical mechanism of the Internet, infringementon the Internet can occur easily internationally. On
the other hand, there is a view that, where thecourt of a country issues an injunction against
infringement on the Internet, it is also technicallyeasy to secure the enforcement of the injunction byaddressing the injunction to an intermediary, etc.
that maintains the site.24

Ⅴ Matters
toBe
Considered
Regarding International Injunctions

2

As seen above, where jurisdiction is based on
the existence of the defendant’s address within the
country of forum, the scope of jurisdiction isextensively recognized beyond the territory of thecountry of forum unless taking a stance like that in
the aforementioned U.S. court precedent. Then, isthe court having jurisdiction that is not limited interms of territory able to examine an infringement
overseas and issue an injunction internationally as
long as the fact of infringement of an intellectual
property right is recognized? In addition, even if
the court is legally granted the authority, has it
actually issued international injunctions?

(1) Difference from recognition/enforcementof monetary judgments
It seems that there are generally differences
between monetary judgments, such as orders ofcompensation of damages, and non-monetaryjudgments such as injunctons. Firstly, it can be said
that the content of injunction is more wide-ranging
than monetary judgments. Secondly, they differ inthe ways of enforcing in the cases where an
addressee of an order does not voluntarily obey tothe order a judgment. Thirdly, special treatment
has been traditionally admitted for an injunctionthat is a remedy classified as that in the field of“equity”measure, in particular, in common law
countries.25

1

Injunctions against Infringements on
the Internet and Injunctions against
Infringements in Real World(1) Parties
Quite a number of lawsuits to seek an
injunction against infringement on the Internet
are filed against Internet service providers. 21

Recognition/Enforcement of Injunctions
Issued by Foreign Courts(2) Tendency of recognition/enforcement offoreign non-monetary judgments
It needs to be studied whether the ways ofrecognition/enforcement of foreign monetaryjudgments and those of foreign non-monetaryjudgments are generally distinguished or not.

● 4 ●IIP Bulletin 2011 Vol.20

(3) Facts after granting an injunction
After a court granted an injunction to preclude
a defendant from infringing an intellectual property
right, the defendant sometimes changes his
conduct or products only a little bit and insists that
he obeyed the injunction. How a foreign court canreact to such new facts when the enforcement of
the injunction is demanded? That can also be anissue.

and request the recognition/enforcement of thecontempt order in a foreign country.28
Can measures which a court has taken to
secure compliance with its injunction berecognized/enforced in other countries, in addition
to the recognition/enforcement of the injunction?
As mentioned above, there are various kinds ofmeasures to secure compliance with court orders.
Therefore, handling seems to be not identical.

3(i)

Measures to Secure EffectivenessThe issue of measures to secure effectivenesscan be understood as a matter that belongs tocompulsory enforcement in a sense. It has also
been considered that, as long as enforcementcompetence belongs exclusively to the country towhich the place of enforcement belongs underpublic international law, 26 enforcement by theorgan of a country is limited, in principle, within
the territory of the country. On the other hand, on
the premise of the interpretation that the issue of
enforcement competence under public internationallaw is limited to the execution of physical binding
power, the following point of view has also beenprevailing recently: As long as a measure to secure
effectiveness is a sort of normative thing at thestage of its being ordered by the court, it cannot be
said that an order concerning a measure to secure
effectiveness is limited within the territory of thecountry that has issued the order.27(1) Types/characters of measures to securecompliance“Measures to secure compliance” provided forin the second sentence of Article 102(1) of theCouncil Regulation on the Community Trade Markare based on the domestic law of a Member State of
the E.U. in which the Community trade mark courtthat issues an injunction is located. Therefore,
measures that are taken as “measures to securecompliance” differ depending on the country.
(2) Recognition/enforcement of measures tosecure compliance
According to Ms Marketa Trimble, who has
analyzed cross-border injunctions issued by U.S.
courts in patent infringement cases, where thedefendant is neither based in the United States nor
has any property in the United States, there are
two possible ways of making effective across-border injunction. One is to request the courtof a foreign country for the recognition/enforcementof the cross-border injunction itself, and the otheris to obtain a contempt order from the U.S. court

IIP Bulletin 2011 Vol.20

Legislation in the E.U.
Article 49 of the Brussels I Regulation
provides that astreinte (periodic payment) ordered
by a foreign court shall be enforceable in certain
cases (where the amount of the payment has been“finally determined” by the court of a Member
State of the E.U. that had ordered the astreinte29).30(ii) Recognition/enforcement of a contempt
order in the United States
In the case in which recognition/enforcementof both a judgment on the merits based on theinfringement of a trademark right and a judgmentof a contempt order, both of which were renderedby the U.S. court, was requested in Canada in2006,31 the Supreme Court of Canada determinedthat enforcement of the contempt order issued by
the U.S. court is not permissible. One of thereasons thereof was that judgments of contempt
orders are always considered to have a criminal
nature in Canada and that judgments of contempt
orders are not enforceable as long as foreign
criminal judgments are not recognizable/enforceable in Canada. 32 Even if civil andcriminal contempt orders are distinguished in the
United States, the definition of nature in the
United States is irrelevant to the determination
on whether enforcement in Canada is permitted.
(iii) Enforcement of monetary sanctions
imposed by the United States in France
On the other hand, even where the Brussels I
Regulation is not applicable, the Court of Cassationof France authorized the enforcement in France ofmonetary sanctions (periodic payments) imposedby the U.S. court (after the amount of the payment
was finally determined) by understanding the U.S.
payment order as a kind of astreinte.33

Ⅵ Suggestions to Japanese Law
1Cases in Japan

In the following sections, how Japanesecourts should deal with demands for injunctions● 5 ●or recognize foreign injunctions in transnational
intellectual property infringement cases will beconsidered in the light of what we examined so far
in this study. In particular, we will see awell-known judgment of the Japanese Supreme
Court in the “card reader case” and a judgment of
the Tokyo district court in the “coral sands case,”
both of which dealt with an issue of cross-borderinjunctions to preclude acts of infringement of aforeign patent.
2

recognized/enforced in other States as it is thecase in the E.U. Therefore, if it were necessary
for Japanese courts to expect their injunctions to
be recognized by foreign courts in order to grantcross-border injunctions, there might be quite
limited situations where Japanese courts cangrant such injunctions.

The Way of Thinking of Japanese Courts
toward Injunctions and the Enforcement(1) Where Japanese courts issues across-border injunction
Even in the card reader case, the Supreme
Court did not deny the international jurisdiction of
the Japanese court over “foreign” patent
infringement cases. The point that became aproblem in terms of a demand for injunction in thecard reader case is that the U.S. patent law, which
can serve as a basis for a demand for injunction,
had cross-border effects. Therefore, when it comesto infringements within the territory of the UnitedStates like that in the coral sands case, it isconsidered that a demand for injunction against theact of infringement within the territory of theUnited States may be accepted as long as therelevant act is found, as a substantive determination,
to constitute infringement of a patent right under
the U.S. patent law. That is, it has not been denied
in a theoretical sense that the Japanese court
issues a sort of cross-border injunctions.
Moreover, according to the holding of theTokyo District Court in the coral sands case, ajudgment rendered by the Japanese court “shall berecognized/enforced in other countries” where theJapanese court is recognized as having
international jurisdiction. Although only negative
confirmation of the right to seek an injunction was
disputed in the coral sands case, the holding of theTokyo District Court is understood as being basedon the premise that, even if the place of
infringement of an intellectual property right isoutside Japan, the Japanese court can issue across-border injunction if the defendant at theJapanese court has general venue within the
territory of Japan.
However, in order to expect recognition/enforcement in other countries, it is extremely
important, in particular, in relation to common law
countries, that the content of the injunction isclearly specified. Furthemore, it is not always
certain that injunctions by Japanese courts can be(2) Measures to Secure the Effectiveness of
Injunctions
While it is not certain that injunctions by
Japanese courts can be recognized/enforced byforeign courts, it does not always mean thatJapanese courts turn out not be unable to grantcross-border injunctions. Firstly, it will be
disputable whether or not the effectiveness ofcourt orders is a condition for Japanese courts togrant a cross-border injunction. Secondly, evenif such a condition shall be fulfilled, it would bepossible to secure effectiveness by resorting to ameasure such as a kind of “astreinte” as far as adefendant has assets in Japan.
(3) Recognition/enforcementofforeign
injunctions by Japanese courts
Then, could the Japanese court authorize theenforcement of a foreign injunction?
In the coral sands case, the Tokyo District
Court stated, “A declaratory judgment on
non-existence of the right to seek an injunctionthat has been rendered by the court of a country
having international jurisdiction should berecognized in other countries, including thecountry of registration, in the same manner as a
judgment dismissing a demand for injunction thathas been rendered by the court of a country
having international jurisdiction, even if thecountry is not the country of registration.”
It seems, however, doubtful that the court
really thought about enforcing foreign injunctionsin Japan as well as recognizing a foreign decision
which declared non-infringement or dismissed ademand for an injunction.

Ⅶ Conclusion
International injunctions can be issued in alegitimate manner in intellectual property
infringement cases. However, there are quite
many unsolved problems, such as thegeographical scope of an injunction andenforcement thereof, in addition to the issue ofinternational jurisdiction that generally becomes aproblem in transnational intellectual property
infringement cases. Whether a court can grant a● 6 ●IIP Bulletin 2011 Vol.20

cross-border injunction is not only related towhether the court has international jurisdiction.
However, discussion has been held on the issue ofto what extent international jurisdiction isrecognized, in determing a demand for across-border injunction, particularly in Europe,
due to the existence of the Brussels I Regulationand the Lugano Convention, on the premise that
judgments rendered by courts whose jurisdiction
was based on theprovisions set in said
Regulation or Convention are relatively easily
recognized/enforced in other countries.
In fact, however, it is difficult to say thatinternational injunctions have been frequently
issued in intellectual property infringement casesin Europe, though cross-border injunctions
through the dutch kort geding procedings at
courts in the Netherlands attracted publicattention for a period of time. In particular, only a
few cases of recognition/enforcement ofcross-border injunctions in other countries havebeen known..
Nevertheless, it seems that one reason why
cross-border injunctions against IP infringement
are not often granted nor enforced abroad is a lackof clarification of the procedural rules as tocross-border injunctions. If the rules can beclearer, cross-border injunctions might be more
often sought and might be granted intransnational intellectual property infringementcases.
1

Annex 1C of the Marrakesh Agreement Establishing
the World Trade Organization.
2
See Article 41 of the TRIPS Agreement (provision set
in Section 1 General Obligations in Part III Enforcementof Intellectual Property Rights).
3
Outside Japan, detailed proposals have been made by
the European Max-Planck-Group for Conflict of Laws inIntellectual Property (CLIP) and the American Law
Institute (ALI). Also in Japan, studies and proposed rules
have been introduced through the Transparency ofJapanese Law Project and by the research group of the
Waseda University Global COE Program.
4
A patent right registered in country A is called country
A’s patent right.
5
In this case, the existence of international jurisdiction
over a defense of validity of a foreign patent right canbecome a problem. See the holdings of the European
Court of Justice in the GAT case (ECJ Case C-4/03,
Judgment of the Court (First Chamber) of 13 July 2006,

Gesellschaft für Antriebstechnik mbH & Co. KG (GAT)v Lamellen und Kupplungsbau Beteiligungs KG (LuK))

6

and the holdings in the coral sands case in Japan.
In most of the cases where infringement of the patentright in country A is found, in many cases, the company
in country B or its affiliate company is supposed to be
conducting some sort of activity that affects country A.
The establishment of joint infringement with an affiliate

IIP Bulletin 2011 Vol.20

company can be questioned in some cases.
See the holdings of the European Court of Justice in the
Roche Nederland case (Case C-539/03: Judgment of the
Court (First Chamber) of 13 July 2006, Roche Nederland
BV and others v Frederick Primus, Milton Goldenberg).
8
Cited below at note 11.
9
Cour de cass. civ., 9 decembre 2003, Revue crit. DIP
2004, 632.
10
See, Marketa Trimble, “Cross-border Injunctions in
U.S. Patent Cases and Their Enforcement abroad,” 13
Marq. Intell. Prop. L. Rev. 331, esp., pp. 355-356 (2009).
11
Article 8 of the Regulation (EC) No864/2007 of theEuropean Parliament and the Council of 11 July 2007 on
the law applicable to non-contractual obligations (RomeII) is a provision on the law applicable to infringement ofintellectual property rights. Paragraph 2 thereof
particularly provides for the cases of infringement of“unitary Community intellectual property rights”
separately from the cases of infringement of otherintellectual property rights (paragraph 1 of said Article).
Therefore, Article 8, paragraph 2 applies in deciding thelaw applicable to infringement of Community trade
marks. On the other hand, the law applicable toinfringement of European patent rights mentioned later
is decided not based on Article 8, paragraph 2 of theRome II Regulation but on paragraph 1 thereof. In thisregard, see Andrew Dickinson, The Rome II Regulation(New York, Oxford University Press, 2008), pp.447 et s.,esp., pp.452-455.
12With regard to the Regulation (EC) No40/1994, details
are given in André Huet, “La marque communautaire: lacompetence des juridictions des Etats members pourconnaître de sa validité et de sa contrefaçon,” JDI, 1994,
pp. 623-641. With regard to the system based on theRegulation (EC) No 207/2009, see Agnès Marcadé, “Lamarquee communautaire devant le juge français,”
Propriété industrielle, 2010, pp.9-11.
13
The latest version is the Council Regulation (EC) No
207/2009 on the Community trade mark (OJ L 78,1 of
24.3.2009). However, the following European Court ofJustice’s preliminary ruling is the interpretation of theprovisions of the previous Regulation (EC) No40/1994 on
the Community trade mark (OJ L11,1 of 14.1.1994).
Those interpretations are considered to apply also as theinterpretations of the relevant provisions of the current
Council Regulation on the Community Trade Mark.
14
Article 1(2) of the Council Regulation on theCommunity Trade Mark.
15
Nokia Corp. v Joacim Wärdell, ECJ, Case C-316/05,
Judgment of 14 December 2006.
16
DHL Express (France) SAS, anciennement DHL
International SA c. Chronopost SA, ECJ C-235/09.
Conclusions de l'avocat général M.P. Cruz Villalón, le 7octobre 2010.
17
As obstacles to the establishment of the system ofCommunity patent (currently called E.U. patent), there
has been difficulty in agreeing on the language used andconstitutional problems concerning a unified court
system, in addition to the risk of translation costs
becoming expensive. With regard to such problems
pointed out from France’s standpoint, see, “Entretiens
avec Marc Guillaume et Jean-Claude Magendie,” Gazette
du Palais, 21 decembre 2006, pp. 3828-3830.
18
For example, Switzerland is also a contracting state of
7

● 7 ●

the Convention.
Convention du 16 septembre 1988 concernant lacompetence judiciaire et l'exécution des decisions en
matière civile et commerciale. The revised Lugano
Convention is effective from January 1, 2011. See, Walter
A. Stoffel&Isabelle Chabloz, Voies d'exécution (2e éd.,Stämpfli Editions SA Berne, 2010), esp., pp. 15-16.
20
476 F.3d 887 (Fed. Cir., 2007).
21
Article 11 of the Enforcement Directive (Directive
2004/48/EC of the European Parliament and the Councilof 29 April 2004 on the enforcement of intellectual
property rights) also provides that Member States shalldevelop law to ensure that rightholders are in a position
to apply for an injunction against intermediaries.
22
Dominique BUREAU & Horatia MUIR WATT, Droit
international privé, Tome II, 2e édit. mise à jour, PUF,
2010, p. 439.
23
Horatia MUIR WATT, “Yahoo! Cyber-Collision ofCultures: Who Regulates?,” 24 Michigan Journal ofInternational Law 673, particularly in p. 679 (Professor
Muir Watt does not support the idea that the discipline in
the real world does not apply to infringements, etc. on
the Internet).
24
MUIR WATT, supra note 20, pp. 689-692. Needless tosay, whether regulating things in cyberspace can betechnically easily effective is not completely unrelated tothe degree of technological development (elaboration offiltering technology and zoning technology).
25
In that sense, in common law countries, there is astronger tendency to handle injunctions separately fromgeneral monetary judgments than in civil law countries.
26
Although there are many past studies concerning
national jurisdiction under international law, in this study,
we mainly referred to Frank GERHARD, L'exécution
force transfrontière des injonctions extraterritoriales non
pécuniaires en droit privé, Schulthess Juristische MedienSA, Zurich, 2000, which analyzes national jurisdiction in
relation to cross-border non-monetary judgments(orders).
27
With regard to the situation of discussion, see, Gilles
Cuniberti & Clotilde Normand & Fanny Cornette, infra
note 27, pp. 259-260.
28
Marketa Trimble, supra note 9, p. 346.
29
With regard to the wording in Article 49 of theBrussels I Regulation, “définitivement fixé,” Professor
Hélène Gaudemet-Tallon states, “The wording merelymeans that astreinte shall be cleared and means of appeal
for a clearance decision being exhausted is notconsidered to be necessary.” In this regard, see, Hélène
Gaudemet-Tallon, Compétence et execution desjugements en Europe, 4e édition, L.G.D.J, 2010, p. 487.
30
Shinobu Ohama, “Buryusseru I kisoku ni okeru
kansetsukyousei no kiritsu” (Discipline of indirect
enforcement in the Brussels I Regulation), Akira
Ishikawa, Makoto Nagata, and Takehiko Mikami, ed.,Bodaresushakai to hou (Borderless society and law)
(Shinzansha Publisher, 2009), p. 125 and, in particular, p.
128; Gilles Cuniberti & Clotilde Normand & Fanny
Cornette, Droit International de l'exécution, L.G.D.J,
2011, p. 273.
31
Pro Swing Inc. v. Elta Golf Inc., Supreme Court of
Canada, judgment of November 17, 2006, [2006] 2 S.C.R.
612;2006 SCC 52.
32
Judgment on the Pro Swing case, paragraphs 34-39.
19

See also, Marketa Trimble, supra note 9, p. 352.
L'affaire Blech, Cass 1re civ., 28 janvier 2009; Cuniberti,
Gazette d¥u Palais, 28 novembre 2009 n°332, p. 2; Gilles
Cuniberti & Clotilde Normand & Fanny Cornette, supranote 27, pp. 273-274. This point is also mentioned in
Ohama, cited above in note 27, at note 67 in p. 154.

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IIP Bulletin 2011 Vol.20