18 International Jurisdiction to Grant
an Interlocutory Injunction to Preclude Defendants
from Infringing Intellectual Property Rights（*）
Research Fellow: Asako Matoba
An Interlocutory injunction is one type of provisional including protective measures. Since it is aprovisional measure, the essence of the provisional disposition is considered to take prompt and effective
measures. For example, by “Brussels I Regulation: Council regulation (EC) No 44/2001 of 22 December
2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial
matters,”broader jurisdiction to grant provisional measures is provided than jurisdiction over an action on
merits. Here, it is convenient for a rights holder to take provisional measures promptly. However, ininternational conflicts related to intellectual property rights, if broad jurisdiction to grant interlocutory
injunction to preclude defendants from infringing IP rights is allowed, a question arises. Clarifying various
characters of the measures by comparing interlocutory injunction to preclude defendants from infringing IP
rights with a judgment on merits and other kinds of provisional measures, this study examines theappropriate rules of international jurisdiction to grant interlocutory injunction to preclude defendants from
infringing IP rights.

Ｉ Introduction
In cases where a conflict or a problem
concerning intellectual property rights arises anda rights holder attempts to obtain relief through acourt, the rights holder may first consider“provisional protective measures” including
provisional dispositions. The concepts opposite
provisional measures are “measures for the caseon merits” or “judgment on merits”; however, it
generally takes more time to obtain a judgment on
merits than to obtain a provisional disposition.
If there is no direct way to obtain relief incases of infringement of intellectual property
rights, even though a person has a right, it has nopractical use. The reason why the TRIPS
Agreement or “Directive 2004/48/EC of theEuropean Parliament and of the Council of 29
April 2004 on the enforcement of intellectual
property rights” (hereinafter referred to as the“Enforcement Order”) in Europe provides
minimum rules to be prepared as the content ofprovisional measures, which is an international
trend, is due to the recognition of theconsiderable importance of obtaining prompt
relief in cases of infringement of rights in orderfor the intellectual property right to be effective
as a right.
(*)

There are various kinds of provisional
measures. The theme of this study isinternational jurisdiction over “provisional
dispositions on injunction of infringement.” I
would like to clarify the characteristics of“provisional dispositions on injunction of
infringement” by examining them in comparison
with other types of provisional measures.
In the following sections, first, the various
kinds of provisional measures that can be taken
against the infringement of intellectual propertiesare reviewed from the perspective of comparative
laws (in Chapter II) and, second, general rules
concerning international jurisdictions in Japan andEurope are reviewed respectively (in Chapter III).
I would then like to examine how international
jurisdiction over orders of provisional disposition
on injunction of infringement is regulated inEurope (in Chapter IV). After reviewing a newly
proposed draft on international jurisdiction, etc.
over conflicts related to intellectual property
based the current situation in Europe (in Chapter
V), I will consider the regulation of international
jurisdiction over orders of provisional disposition
on injunction of infringement in Japan (in Chapter
VI).

This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2009 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.
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Ⅱ Position of Order of Provisional
Disposition on Injunction ofInfringement
The order of provisional disposition on
injunction of infringement is a kind of provisional
measure. What, then, are provisional protective
measures? From the perspective of comparativelaw, there are various kinds of provisional
protective measures, and it is not easy to give
simple definition. For example, Article 1 of the
Civil Preservation Act defines them “(hereinaftercollectively referred to as “civil provisional
remedies”)” as “A provisional seizure andprovisional disposition concerning the subject
matter in dispute to preserve the fulfillment of aright claimed as the merits of a civil suit, and aprovisional disposition to determine provisional
status with regard to a relationship of rights
claimed as the merits of a civil suit.” Theprovisional
dispositiononinjunctionofinfringement based on an intellectual property
right can be included in the “provisional
disposition to determine provisional status.”
1

Types of provisional measures that canbe ordered in cases of infringement ofintellectual property rights(1) Provisional disposition on injunction of
infringement
The most important provisional measure forconflicts related to intellectual properties is
considered to be the provisional disposition on
injunction of infringement. Both Article 50 of
TRIPS Agreement and Article 9, paragraph (1)(a)of the Enforcement Order stipulate preparation ofa provisional disposition to order injunction of
infringement as part of the legal system.
(2) Preservation of evidence
The preservation of evidence is also an
essential system for conflicts related tointellectual properties; it is clearly indicated in
Article 50 of TRIPS Agreement and the
Enforcement Order. Even if a rights holder
recognizes the fact that his/her intellectual
property right appears to be infringed, in manycases, the specific facts on the infringing person
and the extent to which the right is infringed are
not clear from the beginning. In cases of filing anaction, it is necessary to collect information
before deciding against whom the action is to be
filed.
As a model of measures for the preservationof evidence under the Enforcement Order, Article
7 of the Order cites a system of “circumstantial
investigation (including seizure of infringed
articles if necessary)” that is similar to the
French“Saisie-contrefaçon,”whichisacknowledged in countries of European Union (EU).
(3) Seizure of infringer’s property
Article 9, paragraph (2) of the Enforcement
Order stipulates that a judicial organization must
be able to seize an infringer’s property (movables
and real properties) provisionally under theconditions where the infringement is committed
on a commercial scale.
2

Relationship with judgment on merits

In addition to the measures listed above,
there are other measures that can be categorized
as “provisional measures.” What significance doesit have to clarify the meaning of “provisional
measures”?
First, there is a significance of distinguishingit from a judgment on merits. As assuming theregulation of jurisdiction over orders ofpreservation separately from the regulation ofjurisdiction over an action on merits, (i) the
difference between “measures for the action on
merits” and “provisional protective measures”
and (ii) the meaning of “provisional protective
measures” must be clarified.
In this regard, given the Enforcement Orderof the EU, although the systems in each country
did not become completely uniform after its
enforcement, because of this Order, relief for the
infringement of intellectual property rights
achieved a minimum level of harmonization
within the EU area. As a result, in cases where
relief for the infringement of intellectual property
rights is sought before a court in an EU country, aminimum guarantee is supposedly provided as to
the relief, etc. no matter the country in which anaction is filed.

Ⅲ International Jurisdiction
1

What is international jurisdiction?

Generally, the issue of international
jurisdiction is an issue to determine whichcountry’s courts can examine and judge a legal
case. There are international jurisdictions that
conduct proceedings for the case on merits andprovide judgments on merits (jurisdiction to● 2 ●IIP Bulletin 2010

determine the case on merits) and otherinternational
jurisdictions
that
conduct
proceedings on the requirements for issuance ofrequested provisional measures and that issue anorder in cases where the requirements are met(jurisdiction to grant provisional measures).
2

jurisdiction over orders of preservation, thecurrent consensus also considers that theeffectiveness of the measures should be regulated
regardless of their enforceability, like cases ofinternational jurisdiction over the case on merits.
It considers that the issue of effectiveness is aproblem to be considered at proceedings on thenecessity, etc. of the preservation, but not at the
judgment of existence of jurisdiction. However,since multiple options can be found as grounds forjurisdiction over orders of preservation, it is notalways contradictory that international jurisdiction
over orders of preservation is not denied even if
effective measures cannot be taken and thatinternational
jurisdiction
overordersofpreservation is found with a court in a place where
effective measures can be taken. In the following
sections, on the assumption of the abovementioned,
the regulations of jurisdiction over orders ofpreservation under the Brussels regime in Europe(the Brussels Convention and Brussels I
Regulation) will be reviewed first.

Rules of international jurisdiction(1) General
rulesofinternational
jurisdiction in Japan
According to judicial precedents, thefollowing rules of international jurisdiction havebeen established as “reasons” in Japan. Thismeans a rule that, if a forum under the Code ofCivil Procedure exists in Japan with respect to thecase in question, international jurisdiction isfound to be in Japan unless there are special
circumstances to deny the international
jurisdiction.
(2) General
rulesofinternational
jurisdiction in EU countries
In EU countries, on the other hand, the rulesof international jurisdiction, which applies incases where a defendant (an obligor) has domicile
in one of the EU countries, exist as rules common
to all EU countries. This is the Brussels I
Regulation: Council regulation (EC) No 44/2001of 22 December 2000 on jurisdiction and therecognition and enforcement of judgments in civil
and commercial matters.
3

Ⅳ Rules for International Jurisdiction
overOrdersofProvisional
Disposition on Injunction ofInfringement in Europe
1Considerationofinternational
jurisdiction over orders of preservation
and an element of “effectiveness of themeasures”

Fairness between the parties (obligee andobligor), promptness of procedures, etc. are thepoints to be considered when examining issues ofinternational jurisdiction over orders ofpreservation. However, another question to take
into consideration is whether other effective
provisional measures can be taken.
Under Japanese law, it is stipulated that theexistence of jurisdiction should be determined
regardless of its enforceability in regular civil disputecases, from the perspective of the distinction
between judgments and enforcement. Can this idea
also be applied to cases of international jurisdiction
over orders of preservation? As for international

General jurisdiction to grant provisional
measures

Article 31 of the Brussels I Regulation(Article 24 of the Brussels Convention) stipulates,“Application may be made to the courts of a
Member States for such provisional , including
protective, measures as may be available under
the law of the State, even if, under this Regulation,
the courts of another Mamber State havejurisdiction as to the substance of the matter.”
The content of this provision is very abstract,
therefore, with regard to Article 24 of theBrussels Convention (which is almost the samecontent as Article 31 of the Brussels I Regulation),prior judgment has been requested of the Court ofJustice of the European Community in order toclarify the interpretation several times. The Van
Uden case(*1) is considered to be a leading casethat contributed to the clarification of the rules ofjurisdiction over orders of preservation set forthin Article 24 of the Brussels Convention, among
those prior judgments.

(*1) Van Uden Maritime BV v Firma Deco-Line and Another, ECJ C-391/95 (Judgment of November 17, 1998), ECR I-7091.
● 3 ●IIP Bulletin 2010

(ii) Meaning of “real connecting link”
According to the prior judgment in the Van
Uden case, whether the court of a country “thathas no jurisdiction over an action on merits” cangrant a provisional measure or not depends on theexistence of “true relativeness” between “thesubject-matter of the measures sought and theterritorial jurisdictional of the Contracting Stateof the court before which these measures aresought.”.
There may be arguments over the judgmentof the existence of “real connecting link” inindividual cases. When examining how therequirements for “real connecting link” areapplied in relation to various provisional
measures, it is necessary to review the purposeof Article 24 of the Brussels Convention (Article
31 of the Brussels I Regulation) that stipulates
that jurisdiction over orders of preservation isfound to sit with the court of a country that has no
jurisdiction over an action on merits only incertain cases.
(a) Promptness and effectivenessFirst, it is considered that Article 24 finds
jurisdiction over orders of preservation broadly
based on the “necessity” to take provisional
measures promptly and effectively.
(b) Capability of appropriate judgment on setting
conditions for provisional measures, etc.
The court that receives a petition is required
to disseminate the actual conditions under which
requested measures will have effect, and it must
be capable of granting of provisional measures
under suitable conditions in order to ensure thetentativeness of the measures. Therefore, it ispossible to understand the requirement of “realconnecting link” as meaning that the jurisdiction
to grant provisional measures is provided with thecourt that can set conditions appropriately.

(1) Interpretation of Article 24 of theBrussels Convention in the priorjudgment of the Van Uden case
The following two points should be cited
particularly here as the content of the priorjudgment in the Van Uden case. First, it declaredthat jurisdiction over orders of preservation isfound both with “the court of a country that has
jurisdiction over an action on merits” and “thecourt of a country that has no jurisdiction over anaction on merits” under the Brussels Convention.
Second, it clarified that a certain restriction is
imposed with regard to jurisdiction over orders ofpreservation with “the court of a country that has
no jurisdiction over an action on merits.”(2) Jurisdiction
togrant
provisional
measures of “the court of a country thathas jurisdiction over the action on
merits”
First, according to the Court of Justice of theEuropean Community, “jurisdiction over theaction on merits” means jurisdiction over theaction on merits as defined by the Brussels
Convention. In cases where the jurisdiction isbased on the grounds for jurisdiction that are
specified as “exorbitant jurisdiction” by Article 3,
paragraph (2) of the Brussels Convention (such as,
the jurisdiction of the location of property, thejurisdiction of the plaintiff’s domicile, etc.), it
does not fall under “jurisdiction over an action on
merits” as used here, even if the law of the hostcountry justly provides a basis for jurisdiction
over an action on merits.
(3) Jurisdiction
togrant
provisional
measures of “the court of a country thathas no jurisdiction over an action on
merits”
What, then, does the case of “having nojurisdiction over an action on merits” mean?
(i)Cases of “having no jurisdiction over anaction on merits”
As courts that “have no jurisdiction over anaction on merits,” there are courts that can conduct
proceedings on merits if there is no agreement on
an exclusive jurisdiction or arbitration agreement
between parties, and other courts in cases wherean action on merits is pending with one court out of
the multiple courts that have jurisdiction over anaction on merits.

(iii) Interpretation of “real connecting link”
For example, in cases of asset-freeze orders
in England as a kind of provisional measure, if an
obligor is in England, it is possible to say that thatfact alone becomes a reason for a court in England
to have “true relativeness” from perspective ofeffectiveness. However, there are arguments overwhether it is necessary and sufficient, whether
the “true relativeness” cannot be found in othercases, etc.
What, then, will happen with international
jurisdiction in cases of orders of provisional
disposition on injunction of infringement?

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2

International jurisdiction over orders ofprovisional disposition on injunction of
infringement(1) Characteristics of orders of provisional
dispositiononinjunctionofinfringement
When considering the characteristics oforders of provisional disposition on injunction of
infringement, it is necessary to review theproceedings and requirements for their issuance,
and the method of enforcement.
(i)

Proceedings for granting provisional
measures
Provisional dispositions on injunctions ofinfringement as provisional measures aremeasures taken by an easier procedure thanaction on merits generally. The Enforcement
Order provides that ex parte provisional
dispositions on injunctions of infringement arealso permitted (Article 9, paragraph (4)).
(ii) Effects of measures
Unlike orders of injunction of infringement
as judgment on merits, a provisional disposition
on an injunction of infringement is a temporary
measure until the final settlement is given by anaction on merits. However, a general trend canalso be seen in some countries to facilitate final
settlement by means of a provisional disposition
without starting an action on merits. In thisregard, the Enforcement Order stipulates that, incases where an action on merits is not filed withina reasonable period, the provisional disposition on
injunction of infringement must be canceled or it
loses its effectiveness following a petition by the
obligor (Article 9, paragraph (5)).
(iii) Method of enforcement
With regard to provisional dispositions on
injunctions of infringement, an “infringer” isordered into a certain inaction by a court. The
effectiveness of this type of provisional measureis generally secured by a method of “indirectcompulsory execution” from the perspective ofcomparative law. However, some countries do nothave a system of “indirect compulsory execution”
and there are differences between the kind of“indirect compulsory execution” of different
countries.

(2) International jurisdiction over orders ofprovisional disposition on injunction of
infringement and the scope of the orderAccording to abovementioned characteristics
of provisional dispositions on injunction of
infringement, in what cases can international
jurisdiction be found and what is the scope of theorder issued?
(i)

Scope of an order by a court in a country
that has jurisdiction over an action on
merits(a) Jurisdiction over the domicile
In principle, various kinds of actions can be
filed against a defendant in the country that
contains said defendant’s domicile (Article 2,paragraph (1) of the Brussels I Regulation, andArticle 2, paragraph (1) of the Brussels
Convention). With regard to cases of infringementof intellectual property rights, the court of thecountry housing the domicile of an “infringer,”
who becomes a defendant, has jurisdiction over anaction on merits. The court of the country withthe domicile of an infringer has international
jurisdiction broadly with respect to cases ofpreservation when said infringer is an obligor, andmay take measures in relation to persons andproperties outside the territory.
(b) Jurisdiction over the place of torts
Article 5, paragraph (3) of the Brussels I
Regulation (Article 5, paragraph (3) of theBrussels Convention) stipulates jurisdiction overthe place of torts. The infringement of intellectual
property rights is also construed to be a kind oftort, and it is therefore possible to file an action
against infringement of intellectual property
rights with the court of the country that has
jurisdiction based on Article 5, paragraph (3) of
the Brussels I Regulation. However, unlike casesof jurisdiction over the domicile, with regard to
the scope of where the court with jurisdiction
over the place of torts can conduct proceedings orrender a judgment with respect to infringement ofintellectual property rights, there is a certain
restriction imposed based on the interpretation ofa prior judgment in the case of Shevill(*2) by the
Court of Justice of the European Communities orfrom perspective of the territoriality ofintellectual property rights.
(c) Subjective joinder
In many cases where infringements ofintellectual property rights in multiple countries(jointly) come into question, multiple “infringers”(*2) Fiona Shevill, Ixora Trading Inc., Chequepoint SARL and Chequepoint International Ltd v Presse Alliance SA., ECJ
Case C-68/93 (Judgment of the Court of 7 March 1995), ECR I-415.
● 5 ●IIP Bulletin 2010

are involved. Therefore, Article 6, paragraph (1)of the Brussels Convention was a very
convenient provision for rights holders byproviding a means to settle the infringement ofintellectual property rights in multiple countries
jointly. In this regard, courts in Holland were
spotlighted by issuing an order of injunction of
infringement of parallel patent rights jointly inmultiple countries in Europe (cross borderinjunction) through prompt procedures, calledkort geding procedures. Generally, they foundjurisdiction with themselves based on Article 2
and Article 6, paragraph (1) of the Brussels
Convention.
However, the Court of Justice of theEuropeanCommunities
indicatedaninterpretation in the prior judgment in the case of
Roche Nederland(*3) in 2006 that denied theapplication of Article 6, paragraph (1) of theBrussels Convention to a case of infringement ofpatent rights in multiple countries in Europe.

and the scope of the effect of the provisional
measures do not match. However, it is anotherquestion altogether whether the effect outside theterritory is approved by countries other than the
country issuing the order.
3

Provisional dispositions on injunctionsof infringement and allegations ofinvalidity of the right

In 2006, in the prior judgment in the case of
GAT , the Court of Justice of the European
Communities indicated an interpretation that theexclusive jurisdiction prescribed in Article 16,
paragraph (4) of the Brussels Convention (Article
22, paragraph (4) of the Brussels I Regulation)must be construed to be applied to any
procedures concerning patent registration and its
effectiveness.
If this judgment is understood literally, “anyprocedures concerning patent registration and its
effectiveness” include procedures for orders ofpreservation. If a person who is considered to be
an “infringer” brings a suit against theeffectiveness of a foreign patent, it will beinterpreted that a court other than the court in
the state of registry of said patent right cannot
continue the procedures for an order ofpreservation. If so, it is possible to restrict
drastically the cross border injunctions taken as
provisional measures to order the injunction of
infringement of foreign intellectual property
rights.
Jurisdiction over orders of preservation does
not come into question itself in the case of GAT.
Consequently, with regard to the relationshipbetween provisions of exclusive jurisdiction
under the Brussels Regime and jurisdiction overorders of preservation, it is necessary to wait for
future judgments of the Court of Justice of theEuropean Communities.
(*4)(ii) Scope of orders by the court of a country
that has no jurisdiction over an action on
meritsEven if it is a court of a country that has no
jurisdiction over an action on merits, if there is“true relativeness” to the subject of the provisional
measures and the court that accepts the petition of
the measures, the court is found to havejurisdiction over the order of preservation (priorjudgment of the Court of Justice of the European
Communities in the case of Van Uden). As aninterpretation of the requirements for this “truerelativeness,” the standpoint that construes thatthe provisional measures by a court of a country
that has no jurisdiction over an action on merits
shall be limited to the territory of the country
issuing the order is also dominant. However, as
mentioned above, it can be construed that if therequirements for “true relativeness” areestablished for the purpose for making the court
take effective measures in the issuing country andto make the court impose appropriate conditions
for judgment, it is impossible to prevent the effectof the order of preservation from exerting
influence outside the territory, even if theexecution of the preservation is limited to theterritory. This is because, with regard to thecategory of measures that secure the effectivenessof measures by the method of indirect compulsory
execution, the place to execute the preservation

Ⅴ Rules of Jurisdiction to grant
provisional
measures,etc.
under the CLIP Principle
1

Jurisdiction
togrant
provisional
measures under the CLIP principle

Both the Brussels Convention and theBrussels I Regulation, which is a European
Community Regulation established on the basis of(*3) Roche Nederland BV and others v Frederick Primus, Milton Goldenberg, ECJ Case C-539/03 (Judgment of 13 July
2006), ECR I-6535.
(*4) Gesellschaft für Antriebstechnik mbH & Co. KG v Lamellen und Kupplungsbau Beteiligungs KG, ECJ Case C-4/03,● 6 ●IIP Bulletin 2010

the former, target general civil and commercial
cases, and, in particular, they do not always
establish the best rules for jurisdiction over cases
related to intellectual property rights. Therefore,
because the regulations of jurisdiction over cases
related to intellectual property rights is unclear oris the cause of problems even in the EU, rules forjurisdiction, governing law, approval, andexecution focused on cases related to intellectual
property rights (CLIP principle) have been newly
proposed(*5).
Basically, the provisions on jurisdiction overorders of preservation under the CLIP principle(Article 2:501) follow the directions indicated by
the prior judgment in the case of Van Uden by the
Court of Justice of the European Communities.
Paragraph (1) finds jurisdiction over orders ofpreservation with “the court of a country that has
jurisdiction over an action on merits” andparagraph (2) finds jurisdiction over orders ofpreservation also with “the court of a country thathas no jurisdiction over an action on merits” incertain cases. It is interesting that items (a) and(b) that are listed as cases where even the courtof a country that has no jurisdiction over an action
on merits as set forth in paragraph (2) has
jurisdiction over orders of preservation. These
are considered to have shaped the requirements
for “true relativeness” that are indicated by theprior judgment of the Court of Justice of theEuropean Community in the Van Uden case.
2

Type of provisional measures under the
CLIP principle

A more interesting point with the CLIP
principle is that examples of specific provisional
measures (items (a) through (e)) are listed after
the definition of “provisional protective
measures” in Article 2:401, paragraph (3).
3

Recognition of of foreign orders ofpreservation under the CLIP principle

As mentioned above, the CLIP principle
finds jurisdiction over orders of preservation not
only with “the court of a country that has
jurisdiction over an action on merits,” but alsowith “the court of a country that has no
jurisdiction over an action on merits.” Unlike
orders of preservation by the former court, ordersof preservation issued by the latter court cannot
be approved in other countries (Article 4:301 (1)).

Ⅵ Rules of International Jurisdiction
over Orders of Provisional
Disposition on Injunction ofInfringement in Japan
1

Article 12 of the Civil Preservation Act

Legal conditions in European countries havebeen reviewed. Now, regulations of international
jurisdiction over provisional dispositions on
injunctions of infringement under Japanese laws
will be reviewed. After considering the trends in
Europe, I would like to examine the rules in Japanas a legislative discussion.
According to the rules established by the
judicial precedents in Japan with respect tointernational jurisdiction over regular civil actions,in cases where jurisdiction under the Code ofCivil Procedure exists in Japan over said case,international jurisdiction is found with courts inJapan over the case in principle. If there are
special circumstances, the jurisdiction is, by
exception, denied. There is a judicial precedent
with lower instance courts to judge the existenceof international jurisdiction based on the sameidea as cases of petitions for orders ofpreservation.
As rules for jurisdiction over orders ofpreservation in domestic cases in Japan, thefollowing provision is established in Article 12,
paragraph (1) of the Civil Preservation Act:
“A case of order of preservation shall be
under the jurisdiction of the court withjurisdiction over the case on the merits or the
district court having jurisdiction over the locationof the property to be provisionally seized or the
subject matter in dispute.”
2International jurisdiction over a case of
application for provisional disposition(1) In cases where jurisdiction over thecase on merits is found with a court inJapan
If the general forum of a defendant (obligor)
is in Japan, international jurisdiction with a court
in Japan will be found without any problem for an
action on merits or for a case of application forprovisional disposition.
With regard to the jurisdiction over the placeof torts, if plausible reasons are provided for theobjective facts of infringement of intellectual(*5) CLIP European Max- Planck Group for Conflict of Laws in Intellectual Property, “Exclusive Jurisdiction and
Cross-Border IP (Patent) Infringement”, (2007) EIPR 195. The second draft of this proposal is available from the● 7 ●IIP Bulletin 2010

property rights and the place of infringement of
the intellectual property rights or the place where
the results of the infringement are generated is inJapan, it is considered that international
jurisdiction is found with a court in Japan overeither a case on merits or a case of provisional
disposition.
(2) In cases where jurisdiction over thecase on merits is not found with a court
in JapanWith regard to a case of petition forprovisional disposition to determine a provisional
status, there was a ruling of the Tokyo District
Court on August 28, 2007(*6) (unrelated tointellectual property) on a case where jurisdiction
over an order of provisional disposition was notfound with a court in Japan since it was not a“court with jurisdiction over the case on merits.”
This ruling judged that, with regard to cases
where there is an arbitration agreement, “it isreasonable to interpret that” a “court withjurisdiction over the case on merits” “does notinclude a court that could have jurisdiction overan action on merits if there was no arbitrationagreement.” Based on this judgment, in cases
where there is an agreement to grant exclusive
jurisdiction to a foreign court, a court that could
have jurisdiction over an action on merits if there
was no agreement on jurisdiction is not includedin the “court with jurisdiction over the case on
merits” set forth in Article 12, paragraph (1) of
the Civil Provisional Remedies Act.
Theoretically, it is common that jurisdiction
over orders of provisional disposition is found forthe location of the subject matter in disputes
prescribed in Article 12, paragraph (1) of the Civil
Provisional Remedies Act and also with respect tothe provisional disposition to determine
provisional status. The ruling of the Tokyo
District Court on August 28, 2007 stated that
“The petition in question does not seek to order aprovisional seizure or provisional disposition
concerning property. Therefore, “the district
court having jurisdiction over the location of theproperty to be provisionally seized or the subject
matter in dispute” prescribed in said paragraphdoes not become a court with jurisdiction overthe case.” And the judgment construed thatjurisdiction over orders of preservation is foundwith the court of the country containing “theplace of the subject matter in dispute” only incases of provisional disposition on the subject

matter in dispute.
3

Legislative discussion(1) Jurisdiction over provisional dispositions
on injunctions of infringement with acourt of a country that has no jurisdiction
over the case on merits
The issue that the ruling of the Tokyo
District Court on August 28, 2007 raises iswhether there is a court with jurisdiction overprovisional dispositions to determine provisional
status other than the “court with jurisdiction overthe case on merits.”
In this regard, there is also a standpoint that
construes the concept of “the location of thesubject matter in dispute” broadly and finds
international
jurisdiction
overprovisional
dispositions to determine provisional status with“the location of the subject matter in dispute” inaddition to the “court with jurisdiction over thecase on merits.” It is possible to include a location
where the infringement, which is subject toinjunction, is performed in the “location of thesubject matter in dispute”; however, it is difficult
to include the domicile of an obligor in theconcept of the “location of the subject matter in
dispute.” Under Japanese law, for example, incases where the prohibition of manufacturingcertain products is issued as “provisional
disposition to order inaction,” if the obligor does
not follow the order voluntarily, an obligee may
apply for indirect compulsory enforcement.
Indirect compulsory enforcement under Japanese
law is executed in the form of an order to the
obligor to pay money so that it becomes effective
if it is ordered at the main place of the obligor’slife and activity. If so, from the perspective ofeffectiveness, it is reasonable to find jurisdiction
over orders of provisional disposition with the
domicile of the obligor.
In conclusion, it is appropriate to findinternational
jurisdiction
overprovisional
dispositions on injunction of infringement withthe court of a country that has no jurisdiction overthe case on merits, with (i) the country where theinfringement subject to the injunction is
performed (or the country that protects theintellectual property rights being infringed) and(ii) the country of the obligor’s domicile,regardless the concept of the “location of thesubject matter in dispute.”(*6) Tokyo District Court ruling of August 28, 2007, H19(yo)No.20047, Hanrei Jiho No.1991, p.89, Hanrei Times No.1272,
p.282.
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IIP Bulletin 2010

(2) Conditions to be set with the provisional
disposition on injunction of infringement
If courts which do not have jurisdiction as tothe substance of the matter can have jurisdiction
to grant provisional measures and if theproceedings for provisional measures and thoseas to the substance of the matter are held bycourts of different States, it is highly possibilethat inconsistent judgments will be given in theseprocedures. In cases where contradictoryjudgments are given in the procedures forprovisional measures and in the action on merits,
if the effects of the proceedings or orders of theprovisional protective procedures are closer tothe effect of the proceedings or judgment of theaction on merits, the demerits, such as the impact
on the obligor, can become bigger. Therefore,
since jurisdiction to grant provisional measures isregulated separately from the jurisdiction overthe case on merits, it is necessary to prevent
provisional measures to become almost like a final
solution. It is possible to prevent such results byadding the appropriate conditions in a court togive provisional protective dispositions, by
keeping
theprovisional
measuresonly“provisional” or “temporary.”.
These ideas are not new, but have been
indicated as a direction in the abovementioned
Van Uden case. However, the following points
should be examined separately: what is sought inthe case of Van Uden is a typical type of measures,such as provisional dispositions on monetary
payment; and the issue particularly focused on inthis report is the provisional disposition for
injunction of infringement of intellectual property
rights that requires expert and technicalproceedings and judgments.

property rights with a court other than “the courtwith jurisdiction over the case on merits” incertain cases. However, if it is regulated in thisdirection, it is necessary to review the methods ofproceedings and effects in cases of judging the
injunction of infringement in the form of aprovisional disposition and to clarify role sharing
between provisional measures and the judgment
on merits.

Ⅶ Conclusion
Includingprovisional
dispositionson
injunctions of infringement based on theintellectual property rights, it is possible to saythat there is an international wave of agreement
to find international jurisdiction over orders ofpreservation with the courts of a country that has
no jurisdiction over the case on merits. And a
court that has no jurisdiction over the case on
merits, but has jurisdiction over orders ofpreservation is generally a court in a location
where measures can be taken effectively, such as
the place where the measures are executed, etc.
In Japan, it is appropriate to find international
jurisdiction over provisional dispositions on
injunctions of infringement based on intellectual● 9 ●IIP Bulletin 2010