Source: EURLEX
Language: en
Format: md

[JURE summary](#SM)

## JURE summary

This case regards a question of international jurisdiction examined by the High Court of Justice (hereinafter ‘the Court of First Instance’) in an intellectual property case between the company Future New Developments Limited, domiciled in the Cayman Islands (hereinafter ‘the plaintiff’), and the German company B&S Patente und Marken GmbH (hereinafter ‘the defendant’).

The defendant became the proprietor of a European Patent (hereinafter ‘the Patent’) which was assigned from the plaintiff by a written declaration, signed by the director of the defendant, Mr. S. The plaintiff brought a claim against the defendant seeking entitlement to the Patent and alleging that the Mr. S. had no authority to assign the Patent and therefore the assignment had no legal effect. The defendant filed an application seeking a declaration that the court had no jurisdiction to hear the dispute and an order setting aside the claim form. The defendant referred to Article 22(4) of the Brussels I Regulation (1) and alleged that this dispute must be brought in Germany since he is domiciled there. On the contrary, the plaintiff argued that the English court was competent on the basis of Article 5(3), Article 23(1)(b), and Article 24 of the Brussels I Regulation.

The Court considered whether the articles of the Brussels I Regulation invoked by the plaintiff could be applied. Article 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.’ The plaintiff argued that the ownership of the Patent related to a tort on the part of Mr. S. and the Patent´s name was registered in England. The Court rejected this argument, clarifying 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 contract within the meaning of Article 5(1), however, Mr. S. is not a defendant.

Article 23(1) foresees that ‘if the parties … have agreed that a court or the courts of a Member State are to have jurisdiction to settle any disputes which have arisen or which 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; … ‘. The Court judged that no such agreement existed between the parties, therefore, rejected the application of this provision.

Finally, the Court analysed Article 24, according to which, ‘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.' The defendant had entered into protracted proceedings before the Intellectual Property Office (IPO) without first seeking to challenge the jurisdiction and thus committed itself to the jurisdiction of the English courts.  According to the defendant, the IPO was not a court of a Member State within the meaning of Article 24 and therefore the question of entering an appearance should not have arisen. However, the Court considered that since entering an appearance before a court of a Member State is governed by local law, it follows that a party can enter an appearance before the IPO within the meaning of Article 24. For that reason, the Court of First Instance should also have jurisdiction.

The Court of First Instance dismissed the defendant´s application.

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(1) [Council Regulation (EC) No 44/20](https://eur-lex.europa.eu/eli/reg/2001/44/oj)[01 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters](https://eur-lex.europa.eu/eli/reg/2001/44/oj).

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