[Hague-jur-commercial-law] Recog & Enforcement of judgments in IP matters within EU

[Manon Ress]

Would they extend this to non EU countries like Argentina, Egypt,  
Mexico, Suriname etc?  Anyway, the timing of the posting on IPR desk  
is interesting.  I just got the Hague "Final Act" on the choice of  
court convention.
Have a good winter break if any.
Manon


Recognition and enforcement of judgments in intellectual property  
matters within the European Union

http://www.ipr-helpdesk.org/documentos/docsPublicacion/html_xml/ 
8_Recognitionandenforcement[0000006299_00].html



1. Introduction
2. Judicial decisions that can be recognised and enforced
3. Two ways to recognise foreign decisions
4. Grounds for refusal of recognition
5. Competent courts and procedural matters




1. Introduction

The adoption of a judgment in a dispute regarding intellectual  
property matters is the last step in the judicial proceedings.  
However, judicial decisions are only viable in the Member State where  
the court adopting the decision is located. For a judgment to have  
effects or to be enforceable in another Member State it has to be  
recognised by that Member State. Take these two examples:

A court in a Member State has adopted a decision condemning company X  
to pay compensation for damages because of an infringement of company  
Y's intellectual property rights. However, company X does not have  
any money or any asset in that Member State. Therefore, Company Y  
cannot be compensated for damages. Company Y needs to ask for  
recognition of the judgment in any other Member States where company  
X has assets so that the decision can be enforced.

A court in a Member State declared that company X has not committed  
any infringement on company Y's intellectual property rights.  
Nevertheless, company X is suing Company Y once more in a different  
Member State for the same infringement. Company Y can ask for the  
recognition of the judgment in that Member State to block the second  
complaint: the court of a Member State cannot know of an action which  
has been decided by a court of another Member State - this is the so- 
called res judicata effect.

In the European Union, recognition and enforcement in a Member State  
of a judicial decision on intellectual property matters adopted by  
the court of other Member States is governed by articles 32 to 58 of  
the Council Regulation 44/2001 (the so-called Brussels I Regulation).  
These provisions establish a simplified system of recognition and  
enforcement of judgments in civil and commercial matters.


2. Judicial decisions that can be recognised and enforced

The system of recognition and enforcement of the Brussels Regulation  
applies not only to final judgments but also to any other judicial  
decisions. Subject to the conditions stated in art. 37, recognition  
may also be granted to judgments that may still be subject to appeal  
in their country of origin.

Provisional measures granted by the court in a Member State may also  
be recognised under this system for the purpose of being enforced in  
another State. However, according to the European Court of Justice, a  
provisional measure that has been granted inaudita parte debitoris -  
meaning 'without the possibility for the defendant to be heard before  
the measure is adopted' - cannot be recognised in so far as the  
defendant did not have the opportunity to defend himself.


3. Two ways to recognise foreign decisions

Depending on the effects of the foreign judgment that the plaintiff  
wants to invoke, two kinds of recognition procedures are distinguished.

If the recognition of the judgment is only needed in order to make  
use of the res judicata effects - so that new proceedings on the same  
cause of action cannot be initiated -, the request for recognition  
has to be submitted to the court before which the new action has been  
filed. This court must automatically recognise the foreign judgment  
without the need for any procedure(s). In fact, there is only one  
formal requirement: the provision of an authentic copy of the  
judgment. In this case, the effects of the recognition will be  
limited to the particular dispute at hand only.

If a person looks for the recognition of the judgment with effects  
towards any third party in that Member State (erga omnes) or if it  
looks for the enforcement or the execution of the judgment, further  
requirements are needed. First of all, in addition to the authentic  
copy of the decision, a certificate using the standard form of Annex  
V of the Regulation has to be provided. Secondly, the court of  
reception must verify that the decision does not fall in any of the  
grounds of refusal of arts. 34 and 35.


4. Grounds for refusal of recognition

The exclusive grounds on which defendants may allege for the refusal  
of recognition of a foreign decision on an IP matter are the following:

if the decision is manifestly contrary to public policy in the States  
where recognition is requested;

if the decision was given in default of appearance of the defendant  
and he was not notified of the complaint in sufficient time and in  
such a way as to enable him to arrange for his defence, unless the  
defendant failed to commence proceedings to challenge the judgment  
when it was possible for him to do so;

if the decision is irreconcilable with a judgment given in a dispute  
between the same parties in the Member State in which recognition is  
sought;

if the decision is irreconcilable with an earlier judgment given in  
another Member State or in a third State involving the same course of  
action and between the same parties, provided that the earlier  
judgment fulfils the conditions necessary for its recognition in the  
Member State addressed.

Finally, if the court of origin declared jurisdiction in  
contradiction with the rules of Sections 3, 4 or 6, Chapter II of the  
Regulation (art. 35 (1)).

Defendants must not invoke a bad application of law by the court of  
origin in so far as the requested court is not allowed to review the  
foreign judgment on its merits. Furthermore, except for those cases  
of art. 35 (1), the jurisdiction of the court of origin of the  
decision cannot be reviewed either.


5. Competent courts and procedural matters

Recognition of a foreign judgment must be requested before the court  
situated in the place where the defendant is domiciled or before the  
court of the place where the judgment has to be enforced, i.e. the  
place where the defendant has assets that can be seized. A decision  
granting or denying recognition can be appealed in first and second  
instance. A listing of the courts in the different Member States  
where these appeals can be filed is included in Annexes II and III of  
the Regulation.

The procedure is governed by the relevant provisions of the  
Regulation and by the national law of the requested court.

Once a judgment has been recognised in a Member State, the  
enforcement is carried out in accordance with the procedural laws of  
that Member State.





************************************************
Manon Anne Ress
manon.ress@cptech.org,
www.cptech.org

Consumer Project on Technology
1621 Connecticut Ave, NW, Washington, DC 20009 USA
Tel.:  +1.202.332.2670, Ext 16 Fax: +1.202.332.2673

Consumer Project on Technology
1 Route des  Morillons, CP 2100, 1211 Geneva 2, Switzerland
Tel: +41 22 791 6727

Consumer Project on Technology
24 Highbury Crescent, London, N5 1RX, UK
Tel: +44(0)207 226 6663 ex 252 Fax: +44(0)207 354 0607