Neutral Citation Number: [
 2014]
  
EWHC
  
1874
  
(IPEC ) 
  Case No: IP 14 M 
0002 7 
IN THE HIGH COURT OF JUSTICE  
CHANCERY DIVISION  
INTELLECTUAL PROPERTY ENTERPRISE COUR T 
 
  Royal Courts of Justice, Rolls Building  
Fetter Lane, London, EC4A 1N L 
  09/06/
 2014 
B e f o r e :  
HIS HONOUR JUDGE HACO N 
____________________  
Between:  
 
 FUTURE NEW DEVELOPMENTS 
LIMITED  Claimant  
 - and -  
 B & S PATENTE UND MARKEN GmbH  Defendant  
____________________  
Malcolm Chapple (instructed by Briffa solicitors) for the Claimant  
Ulick Staunton (instructed by Lupton Fawcett Denison Till) for the Defendant  
Hearing dates: 2nd June 
 2014
   
____________________  
HTML VERSION OF JUDGMENT
 
____________________  
Crown Copyright ©  
Judge Hacon :  
Background   
1. The De fendant ("B&S") is a company domiciled in Germany. It is the 
registered proprietor of European Patent (GB) 1 095 541 ("the Patent") which 
relates to energy saving technology for use with fluorescent tubes. The 
application for the Patent was filed on 30 Sep tember 1999 by Inotec GmbH 
("Inotec"). On 27 October 2001 Inotec assigned the application to the 
Claimant ("FND"), a company domiciled in the Cayman Islands. The Patent 
was granted by the European Patent Office on 17 July 2002.  
2. On the face of a written de claration of assignment dated 23 March 2009 the 
Patent was assigned from FND to B&S. The declaration is signed by Alois 
Steiert who, at least until 21 February 2009, was a director of FND. The 
assignment was registered by the UK Intellectual Property Offic e ("IPO") so 
that B&S is recorded as the registered proprietor of the Patent.  
3. FND claims that on 23 March 2009 Mr Steiert had no authority to assign the 
Patent and that the purported assignment is of no legal effect. On 17 
September 2012 FND filed a refer ence in the IPO under section 37 of the 
Patents Act 1977 ("the Act") claiming entitlement to the Patent.  
4. There was a hearing on 23 October 2013. In a Decision dated 23 December 
2013 the Hearing Officer, Julyan Elbro, directed that the claim would be more 
properly dealt with by the court and therefore declined to deal with the 
reference, pursuant to section 37(8) of the Act.  
5. On 7 January 
 2014
  FND issued a claim form in this court ("the IPEC") 
claiming entitlement to the Patent. An acknowledgment of service dated 20 
February 
 2014
  was filed by B&S  in which B&S indicated its intent to 
challenge the jurisdiction of the court. By an application notice dated 4 March 
2014
  B&S sought a declaration that the court has no jurisdiction to hear the 
dispute and an order setting aside the claim form. That application is now 
before me.  
Grounds for the jurisdiction of the court  
6. The jurisdiction of the court is governed by Council Regulation (EC) 44/2001 
("the Brussels I Regulation"). B&S's initial skeleton argument in support of 
this application challenged jurisdiction on straightforward grounds. Art.22(4) 
does not apply to a dispute about the ownership of registered intellectual 
property rights, see Case 288/82 Djuinstee v Goderbauer  [1983] ECR 3663. 
Therefore art.2 of the Regulation applies. B&S is domiciled in Germany, 
accordingly the p resent dispute must be brought there.  
7. FND's skeleton argument disputed none of this, save the final conclusion. It 
was argued that this court has jurisdiction on four alternative grounds. It is 
convenient to deal with them in the following order:  
(1) The  English courts are the forum conveniens ; 
(2) art.5(3) of the Brussels I Regulation applies;  
(3) art.23(1)(b) applies;  
(4) art.24 applies.  
Forum conveniens  
8. This ground was not pursued at the hearing, I think with good reason. The 
doctrine of forum non con veniens , and by extension an argument that England 
is the forum conveniens , is incompatible with the Brussels I Regulation and 
can have no application where the Regulation is engaged (see Case C -281/02 
Owusu v Jackson [2005] ECR I -1383 ).  
Article 5(3)  
9. Art.5(3) states  
"A person domiciled in a Member State may, in another Member State, be 
sued:  
… 
(3) in matters relating to tort, delict  or quasi -delict, in the courts for the place 
where the harmful event occurred or may occur. " 
10. FND argued that the claim to ownership of the Patent related to a tort, namely 
the misrepresentation by Mr Steiert of his authority to assign the Patent on 
behalf  of FND. That had happened in Germany but FND submitted that the 
place where the harmful event occurred, namely the registration of the Patent 
in B&S's name, was England. Case 21/76 Handelswerkerij GJ Bier BV v 
Mines de Potasse D'Alsace SA [1976] ECR 1735  was cited.  
11. Originally this argument was put on the basis that the tort was fraud on the 
part of Mr Steiert. When it was pointed out  that FND had abandoned any 
allegation of fraud in the proceedings before the IPO, to the extent of striking 
out parts of its Statement of Grounds, misrepresentation was relied on instead 
as the relevant tort.  
12. I do not accept that art.5(3) applies, the to rt relied on being misrepresentation 
(or fraud). It has long been established that the expression 'matters relating to a 
tort, delict or quasi -delict' comprehends all actions which seek to establish the 
liability of a defendant which are not related to a c ontract within the meaning 
of art.5(1), see Case 189/87 Kalfelis v Bankhaus Schröder Münchmeyer 
Hengst & Co  [1988] ECR 5565 . Since Kalfelis there has since been 
considerable discussion by the courts of what constitutes the 'liability' of a 
defendant (see, for example, Briggs and Rees, Civil Jurisdiction and 
Judgments  5th ed., at ¶2.173 to 2.174). The claim is to the entitlement of the  
Patent; it is not alleged, and so far as I am aware could not be alleged, that the 
Patent is owned by B&S through any misrepresentation on the part of B&S. 
Mr Steiert is not a defendant.  
Article 23(1)(b)  
13. Art.23(1) of the Brussels I Regulation is in the following terms:  
"If the parties, one or more of who is domiciled in a Member State, have 
agreed that a court or the courts of a Member State are to have jurisdiction to 
settle any disputes which have arise n or may arise in connection with a 
particular legal relationship, that court or those courts shall have jurisdiction. 
Such jurisdiction shall be exclusive unless the parties have agreed otherwise. 
Such an agreement conferring jurisdiction shall be either:  
(a) in writing or evidenced in writing; or  
(b) in a form which accords with practices which the parties have established 
between themselves; … "  
14. FND submitted that in the IPO proceedings B&S had entered into argument 
regarding the merits of FND's claim an d that, while nominally reserving its 
right to challenge jurisdiction, it had in effect conducted itself in a manner 
indicating abandonment of that challenge. This constituted a practice which 
the parties had established between themselves within the meani ng of 
art.23(1)(b) on which FND could now rely. Pursuant to that article the English 
courts have exclusive jurisdiction.  
15. It is important to bear in mind that paragraph (1)(b) falls within an article 
(art.23) concerned with the choice of jurisdiction by agreement  between the 
parties. Briggs and Rees give a helpful summary of the history and purpose of 
art.23(1)(b) (at ¶2.116):  
"The wording which now appears as Article 23(1)(b) was introduced into the 
Brussels Convention on the accession of Spain and Port ugal, to loosen the grip 
of the formality requirement of writing or evidence in writing [required by 
art.23(1)(a)]. It goes beyond the liberalisation of the requirement of writing, in 
that it allows for an agreement on jurisdiction to be validated even whe re there 
is an absence of writing recording the assent of the party to be bound, so long 
as there is evidence of a practice having been established between the parties. 
The reference to practices which the parties have established between 
themselves has in  mind, no doubt, a situation in which the history of past 
dealings would suggest that it would be bad faith on the part of a party who 
sought to rely on the lack of writing to challenge the formal validity of the 
agreement, or to argue that there was no no tice of the proposed agreement on 
jurisdiction."  
Litigation, including that in the IPO, is not centred on any agreement between 
the litigating parties – rather the opposite. Of course it is possible that parties 
may agree about particular matters during th e course of litigation, such as an 
agreement that for the purposes of the dispute an identified assertion will be 
taken to be unchallenged, but nothing of that sort happened between these 
parties in the IPO. I will hypothesise for this purpose that in the IPO B&S had 
expressly and unequivocally abandoned any challenge to the jurisdiction of 
English courts. That would have been a concession by B&S in the course of 
the proceedings, not an agreement between the parties by way of a course of 
conduct or, more ex actly, an agreement in a form which accorded with 
practices which the parties had established between themselves.  
16. I therefore reject the submission that this court has jurisdiction pursuant to 
art.23(1)(b).  
Article 24  
17. Article 24 of the Brussels I Regulati on is as follows:  
"Apart from jurisdiction derived from other provisions of this Regulation, a 
court of a Member State before which a defendant enters an appearance shall 
have jurisdiction. This rule shall not apply where appearance was entered to 
contest  jurisdiction, or where another court has exclusive jurisdiction by 
virtue of Article 22. " 
18. It was common ground that if the proceedings before this court were 
considered in isolation, B&S did not enter an appearance. In the 
acknowledgment of service the bo x for challenging jurisdiction was crossed 
and within 14 days of filing the acknowledgment B&S made its application 
disputing the court's jurisdiction supported by evidence pursuant to CPR 
11(4).  
19. FND's skeleton argument based its case in relation to art.2 4 on the same facts 
as, and by way of alternative to, the argument in relation to art.23(1)(b). In 
short, B&S had entered into what FND characterised as protracted 
proceedings before the IPO, B&S had engaged in those proceedings without 
first seeking to ch allenge jurisdiction and thus committed itself to the 
jurisdiction of the English courts. There was said to be a 'seamless connection' 
between the IPO proceedings and those currently before this court, such that 
they can be deemed to be the same. It was no w too late to challenge 
jurisdiction.  
20. The primary response of counsel for B&S when opening the application 
before me was that the IPO was not 'a court of a Member State' within the 
meaning of art.24 and therefore no question of entering an appearance coul d 
arise. No authority has been found by either counsel which touches on what 'a 
court of a Member State' and 'the courts of a Member State' mean in the 
Brussels I Regulation. I suggested that a potential difficulty with this argument 
was that those article s which confer jurisdiction in the Brussels I Regulation, 
such as arts.2, 5 and 6, could never confer jurisdiction on the IPO because it is 
neither a court of a Member State (nor ipso facto a court of a place in a 
Member State). Counsel for B&S submitted t hat the IPO could have 
jurisdiction if it was conferred by English law (or presumably the law of any 
other part of the UK), but not if jurisdiction was conferred pursuant to the 
Brussels I Regulation.  
21. I think this is a false distinction. It seems to me that it is wrong to treat the 
Brussels I Regulation as either applying or not applying to a question of 
jurisdiction as if it were alternatively turned on or off. The Regulation always 
applies but in some purely local circumstances, take for  instance whether an 
intellectual property case should be heard by the general Chancery Division, 
the IPEC, the IPO or an Appointed Person, the Regulation has nothing to say 
and is therefore not engaged. In other local circumstances, such as whether 
Englis h or Scottish courts have jurisdiction, or whether this or that county 
court has jurisdiction, it might be engaged (see arts.5 and 6).  
22. On the present facts, when FND started proceedings there was necessarily a 
question as to whether such proceedings shoul d be started in England, 
Germany or elsewhere, irrespective of whether the parties in fact gave the 
issue much attention. The Brussels I Regulation was undoubtedly engaged; 
identifying which courts had jurisdiction depended on the application of its 
provis ions. If B&S's submission were right, the proceedings could and should 
never have been started in the IPO, leaving aside other possible reasons, 
because it is not a 'court'. The IPO is forever excluded from jurisdiction where 
the Brussels I Regulation is e ngaged. I note that this was not a point taken at 
the time, i.e. before the IPO, but in any event I do not accept it. If at the start 
of the IPO proceedings the Regulation awarded jurisdiction to the English 
courts (I make that hypothetical assumption sole ly for the purpose of this 
paragraph) then the proceedings were properly started in England. In my view 
identifying the tribunal or tribunals in England which were entitled to hear the 
case was then a matter concerning which the Regulation was indifferent.  It 
was consequently determined solely according to English domestic law. In 
other words, 'the courts of the Member State' in arts.2, 5, 6 and 'a court of a 
Member State' in art.24 of the Regulation encompass any tribunal of the 
relevant Member State, or t ribunal of a place within the Member State as the 
case may be, which may lawfully hear the proceedings.  
23. B&S also made the following submissions on the assumption, contrary its 
primary case, that the IPO is 'a court of a Member State':  
(1) It was impossib le to enter an appearance in the IPO according to the rules 
of the IPO because those rules have no equivalent to CPR Part 11 for disputing 
the court's jurisdiction. If the jurisdiction could not be disputed, neither could 
a litigant submit to it as a matte r of English law.  
(2) It was not possible to enter an appearance in the IPO within the meaning of 
art.24 of the Brussels I Regulation.  
(3) The IPO proceedings were in any event now terminated. The only relevant 
question was whether B&S had entered an appea rance before the IPEC. It was 
common ground that it had not if the IPEC is considered in isolation. It was 
wrong in law to treat the IPEC proceedings as being a seamless continuation 
of the IPO proceedings, as FND alleged.  
Whether a party can dispute the j urisdiction of the IPO  
24. Art.24 does not specify the rules according to which a party enters an 
appearance before the court of a Member State. The relevant rules are those of 
the procedural law of the court in question, provided that they are consistent 
with the jurisdictional rules of the Brussels I Regulation (see Maple Leaf 
Macro Volatility Master Fund v Rouvroy [2009] 
 EWHC
  257 (Comm), at 
[189]).  
25. CPR Part 11 does not apply in the IPO but it does not at all follow that a party 
is thereby precluded from challenging the IPO's jurisdiction. As  counsel for 
FND rightly pointed out, under the Patents Rules 2007, which govern the 
conduct of proceedings in the IPO, rule 78 would allow a defendant to 
challenge jurisdiction in his counterstatement and indeed B&S did exactly 
that, albeit in an equivoca l way. Rule 83 permits a party to apply to strike out 
his opponent's statement of case on grounds which include, under rule 
83(2)(a), that the statement of case "discloses no reasonable grounds for 
bringing or defending the claim". A party is free to chall enge the jurisdiction 
of the IPO under the Brussels I Regulation if it so chooses.  
Whether a party can enter an appearance before the IPO  
26. Since entering an appearance before a court of a Member State is governed by 
local law (see Maple Leaf above), it fol lows that a party can enter an 
appearance before the IPO within the meaning of art.24.  
Whether a party who reserves his position on jurisdiction can enter an 
appearance  
27. Before going on to B&S's third argument, there is an issue I should address 
first. B&S  did not argue that its reservation made regarding jurisdiction before 
the IPO precluded the possibility that it had entered an appearance before the 
IPO. I will therefore not explore in exhaustive depth the law in relation to the 
degree to which a party i s entitled to dispute the jurisdiction of the court and 
simultaneously take one or more steps in the proceedings inconsistent with his 
challenge to the jurisdiction, in particular a step relating to the decision on the 
merits. My own researches suggest tha t the law is not altogether clear. 
However, for reasons that will appear below I should say something about the 
view I have reached in this regard.  
28. In Global?Multimedia ?International ?Limited v ARA Media Services  [2006] 
EWHC
  3612 (Ch) the Chancellor said this:  
"[27] The test to be applie d in determining whether any particular conduct 
amounts to a submission to the jurisdiction was considered by Colman J. in 
Spargos Mining NL v Atlantic Capital Corporation  [1995] reported only in 
"The Times" for 11th December, but quoted in full by Patten J. in SMAY 
Investments Ltd. v Sachdev  [2003] 1WLR 1973  at p.1976. I reproduce the 
whole of the quote as set out in that paragraph 41 from the Judgment of Patte n 
J:  
"In approaching the question of submission, I have in mind the following 
authorities. In Astro Exito Navagacion S.A. v. W.T. Hsu , otherwise known, 
more pronounceably, as The 'Messiniaki Tolmi' , [1984] 1 Lloyds Reports, 266 
, Lord Justice Goff (as he then was) at page 270, said this:  
'Now a person voluntarily submits to the jurisdiction of the Court if he 
voluntarily recognizes, or has voluntarily recognized, that the Court has 
jurisdiction to hear and determine the claim which is the subject matter of the 
relevant proceedings. In particular, he makes a voluntary submission to the 
jurisdiction if he takes a step in the proceedings which in all the circumstances 
amounts to a recognition of the Co urt's jurisdiction in respect of the claim 
which is the subject matter of those proceedings. The effect of a party's 
submission to the jurisdiction is that he is precluded thereafter from objecting 
to the Court exercising its jurisdiction in respect of suc h claim. Whether any 
particular matter, for example an application to the Court, amounts to a 
voluntary submission to the jurisdiction must depend upon the circumstances 
of the particular case.'  
In Sage v. Double A Hydraulics Ltd , [1992] Times Law Reports,  165 , Lord 
Justice Farquharson said (and this is a report of the judgment which is not 
reported in oratio recta ):  
'A useful test was whether a disinterested bystander with knowledge of the 
case would have regarded the acts of the Defendant, or his solici tors, as 
inconsistent with the making and maintaining of his challenge.'  
In arriving at the view to be imputed to the disinterested bystander, it seems to 
me that one has to bear in mind that there will be an effective waiver, or a 
submission to the jurisd iction, only where the step relied upon as a waiver, or 
a submission to the jurisdiction, cannot be explained, except on the 
assumption that the party in question accepts that the court should be given 
jurisdiction. If the step relied upon, although consis tent with the acceptance of 
jurisdiction, is a step which can be explained also because it was necessary or 
useful for some purpose other than acceptance of the jurisdiction, there will, 
on the authorities, be no submission.  
If the well -informed bystander had been left in doubt because what the 
defendants had done was equivocal, in the sense that it was explicable on other 
grounds in addition to agreement to accept the jurisdiction of the court, then 
the conclusion must be, on the authorities, that there wo uld have been no 
submission to the jurisdiction. The representation derived from the conduct of 
the party said to have submitted must be capable of only one meaning."  
[28] Thus the test to be applied is an objective one and what must be 
determined is wheth er the only possible explanation for the conduct relied on 
is an intention on the part of the defendant to have the case tried in England."  
29. It is accordingly clear that as a matter of English law a defendant will have 
waived an objection to jurisdiction by  reason of his conduct if that conduct, 
assessed objectively, is capable of being interpreted only as an intention on his 
part to have the case tried in England. Where his conduct includes at least 
some sort of reservation with regard to his right to chall enge to the 
jurisdiction, it seems to me that this must be considered as part of the overall 
picture in making the objective assessment. Both the force and clarity of the 
reservation and the nature of the other conduct will be relevant. I also take the 
view, however, that a defendant cannot treat an expressed reservation of his 
right to challenge jurisdiction as a 'get out of jail free card', invariably 
overriding any other conduct so that he can never be said to have submitted to 
the jurisdiction.  
30. This ob jective assessment of the defendant's conduct is equally relevant to 
whether he has entered an appearance within the meaning of art.28 of the 
Brussels I Reguation. Teare J said in Antonio Gramisci Shipping Corp. v 
Recoletos Ltd [2012] 
 EWHC
  1887 (Comm); [2012] I.L.Pr 36 :  
"[65] It is common ground that in determining whether there has been an 
appearance pursuant to art.24 of the Brussels Regulation it is appropriate to 
consider whether there has been a submission to the jurisdiction in accordance 
with the local law, in this case,  English law."  
Teare J went on to refer to the judgment of the Chancellor in Global 
Multimedia . (The ruling of the Court of Appeal on appeal from Teare J's order 
was not concerned with art.24, in relation to which permission to appeal was 
refused).  
31. Was B&S 's overall conduct before the IPO, objectively assessed, conduct for 
which the only possible explanation was an intention (I would add: including 
an intention later abandoned) to have the dispute with FND tried in England?  
32. FND filed its statement of groun ds dated 10 September 2012. In response 
B&S filed a counterstatement dated 4 January 2013 which took the form of 
fully pleaded defence to FND's allegations. Quite aside from various general 
assertions on the merits of the case, B&S addressed and responded to the 
allegations in the statement of grounds paragraph by paragraph in the usual 
way of a defence. The counterstatement also included this at paragraph 6:  
"Further, the companies referred to and some of the relevant documents are 
the subject of several different applicable laws and the courts of other 
jurisdictions may be the correct forum to decide some or all of the issues 
raised in this application. B & S reserves all its rights in respect thereof in 
particular until legal advice has been sought as to  such several applicable laws 
and jurisdiction."  
33. So a reservation with regard to jurisdiction was there but it was both equivocal 
and conditional. The main thrust of the counterstatement was an engagement 
in detail with FND on the merits of the case.  
34. Ther e was a response to counterstatement dated 21 March 2013 from FND. In 
a written preliminary evaluation dated 9 July 2013 the Hearing Officer 
indicated that he wished to be addressed on the question whether the 
Comptroller should decline to deal with the re ference in favour of 
determination by the court. B&S's response was that he should indeed decline 
to deal with the case; FND said that the Comptroller should decide the matter. 
A hearing for 23 October 2013 was arranged to resolve that point. B&S did 
not a ttend the hearing, but made written submissions. Once again, these do not 
seem to me to be consistent with a challenge to the jurisdiction. They are 
recorded by the Hearing Officer as follows:  
"[8] In its written submissions, the defendant argues that thi s case is not about 
any aspect of patent law, but will involve detailed consideration of a number 
of non -patent law points, notably the effect of the share mortgage and the 
validity of the assignment, and also potentially questions of fraud. It also 
argues  that this may involve issues of foreign law, as the claimant is 
incorporated in the Cayman Islands and the share mortgage is expressed to be 
governed by the laws of Hong Kong. It further argues that cross -examination 
of Mr Steiert and others is likely to be necessary."  
35. Thus B&S's primary position was not that the Comptroller should decline to 
hear the case because he had no jurisdiction; it was that he should decline 
because the case was of a nature that it would be better heard by the Patents 
Court or th e IPEC. B&S did, however, also apparently raise the jurisdiction 
point again. The Hearing Officer recorded this:  
"[9] The defendant also states that it reserves its rights to assert that the 
tribunals and/or courts of England and Wales lack jurisdiction, and/or are not 
the appropriate forum for determining this matter."  
36. Taking all this into consideration I take the view that the overall conduct of 
B&S before the IPO could only be interpreted as a willingness for the dispute 
with FND to be he ard in England, initially by the IPO and subsequently, by 
the time of the hearing in the IPO, that it should be heard by the Patents Court 
or the IPEC. B&S therefore entered an appearance before the IPO. For the 
reasons I have given above, I think that the  IPO is a 'court' of the UK for the 
purposes of art.24, so B&S entered an appearance before a court of the UK 
within the meaning of that article.  
Whether entering an appearance before the IPO gives the IPEC jurisdiction  
37. That still leaves open the question  whether B&S was entitled to challenge 
jurisdiction afresh when the proceedings in the IPEC were launched.  
38. FND submitted that the present proceedings in the IPEC are a 'seamless 
continuation' of those before the IPO. I don't think that is quite right. Pur suant 
to s.37(8) of the Act the Hearing Officer on behalf of the Comptroller declined 
to deal with the dispute and those proceedings came to an end. FND was 
obliged to and did start fresh proceeding in the IPEC by its claim form dated 7 
January 
 2014.  However that consequenc e of English procedural law does not 
seem to me to make a difference.  
39. Use of the singular in art.24: 'a court' of a Member State, cannot imply that 
entering an appearance before a court gives only that particular court 
jurisdiction. As counsel for B&S acc epted, a court hearing a case on appeal 
must also have jurisdiction even though it is different from the court to which 
art.24 first applied.  
40. The important distinction, B&S submitted, was that bringing the proceedings 
in the IPEC required a fresh originat ing process: a claim form. In effect, 
counsel for B&S argued that entering an appearance before a court of Member 
State gives jurisdiction to that court and any other court to which the 
proceedings progress, provided that no fresh originating process is re quired. If 
it is required, the slate is wiped clean and the defendant may raise anew a 
challenge to jurisdiction.  
41. No authority was provided in support of this proposition, whether direct or 
tangential. No policy reason was advanced to suggest why it would  be in the 
European public interest. It seems to me that there are two related reasons why 
it would not. The first is that the effect of such a rule would vary from one 
Member State to another, depending on the vagaries of national procedural 
law. The seco nd is that because of such variation art.24 would lack 
predictability in its effect, leaving litigants uncertain where they stand. The 
better view, in my judgment, is that once a party has entered an appearance 
before a court of a Member State, that court,  together with any other court of 
the Member State which may hear any stage of the proceedings according to 
local law, has jurisdiction under art.24.  
42. Since B&S has entered an appearance before the IPO, it follows that this court 
also has jurisdiction over  the proceedings pursuant to art.24.  
Abandonment of Article 24 by FND  
43. Towards the end of his submissions in response to those of B&S, counsel for 
FND stated that he no longer advanced any argument for jurisdiction pursuant 
to art.24. I asked why. He said that FND was precluded from relying on art.24 
because of the express exception in that article to its applicability where 
another court has exclusive jurisdiction by virtue of art.22. I pointed out that 
art.22 does not apply to questions of ownership of a patent, reminding him of 
Djuinstee (cited above), which I had thought to be common ground. Counsel 
for FND nonetheless repeated that reliance was no longer placed on art.24. He 
submitted that the IPO was not a court of a Member State within the meaning 
of art.24 since proceedings in the IPO were to be treated as arbitrations and 
fell outside the ambit of the Brussels I Regulation (art.1(1)).  
44. This left me a little nonplussed. In the normal course it is for parties to decide 
which points they wish to pursue and generally speaking it is not for the court 
to interfere with that. Moreover this is not a case, such as arises under art.25 
and art.27 of the Brussels I Regulation, where the court must of its own 
motion decide on its jurisdiction.  
45. Nonetheless, this i s still a question about this court's jurisdiction. I have been 
given reason to consider the effect of art.24 in the present case. In doing so I 
have considered the effect in law of B&S's stated reservations regarding the 
jurisdiction of the IPO. I do not accept either of the points made at the hearing 
by counsel for FND regarding the non -applicability of art.24: in my view 
art.22 is not engaged and I reject the submission that proceedings before the 
IPO are to be treated as arbitration proceedings within t he meaning of art.1(1) 
of the Brussels I Regulation. I have reached the conclusion, for the reasons I 
have given, that B&S entered an appearance before a court of the UK within 
the meaning of art.24 – the IPO – and that as a consequence the IPEC has 
jurisd iction.  
46. Under the terms of art.24, where it applies the court "shall have jurisdiction." 
These words echo the words of art.2: subject to the Regulation persons 
domiciled in a Member State "shall … be sued in the courts of that Member 
State". It is established law that a court which has jurisdiction under art.2 
cannot decline the jurisdiction, see Owusu v Jackson (cited above). I bear in 
mind that art.2 constitutes a basic rule of the Brussels I Regulation whereas 
art.24, as an exception, falls to be  construed more narrowly (see for example 
Kalfelis in the context of exceptions provided for in art.5). But having 
construed art.24 I have concluded that this court has jurisdiction. And 
although FND has abandoned art.24 it still submits that this court ha s 
jurisdiction. It seems to me that consequently this court must accept 
jurisdiction.  
Conclusion  
47. The application by B&S is dismissed .