Euro vision of IP still unclear

Roger Pearson looks at the most recent cases that have highlighted problems associated with pan-European intellectual property law.

Pan-European injunctions have become a hot topic in intellectual property circles in recent years. The Dutch courts consider themselves empowered, principally by the Brussels Convention, to grant injunctions against multiple defendants throughout Europe, provided at least one of the defendants is domiciled in the Netherlands.

However, following abolition of the double actionability rule by the Private International Law (Miscellaneous Provisions) Act 1995, the English courts are no longer restricted from considering "foreign" causes of action, and have done so in three recent cases. The results have been mixed.

In Pearce v Ove Arup Partnership, Mr Justice Lloyd would have entertained an action for infringement of Dutch copyright in the Netherlands where one of the defendants was domiciled in the UK had he not struck the action out because the claim was speculative and unarguable. In Mecklermedia v DC Congress, Mr Justice Jacob considered he should hear an English passing-off case, notwithstanding the defendants' arguments that he had no jurisdiction to do so as registered trademark proceedings had already started in Germany. Mr Justice Jacob held that article 21 of the convention did not apply because the parties and the causes of action were different and that article 22 did not apply because there was no risk of irreconcilable judgments.

In Coin Controls v Suzo, Mr Justice Laddie decided not to hear the part of the action dealing with infringement of German and Spanish patents as the validity of the patents was a matter for the jurisdiction of the local courts under article 16(4) of the convention.

It is surprising against this backdrop of conflicts of laws that, until recently, the UK courts have not been asked to consider whether Dutch courts should grant relief with respect to English IP rights. This was set to change at a hearing scheduled before Mr Justice Jacob in the case of Boston Scientific Corporation v Pal Maz (effectively Johnson & Johnson). That action centres on stents – medical devices used in non-invasive heart surgery – and with the worldwide stent market estimated at $1,200m, £30m of which is accounted for by the UK, it is an action of considerable significance.

Boston applied for an "anti-suit injunction" to prevent J&J proceeding with an application in the Dutch courts for a pan-European injunction that would be effective in the UK. It was set to seek an order requiring J&J to amend its Dutch proceedings to delete consideration of UK patent infringement.

Boston had commenced proceedings in the UK for declarations of non-infringement and for the revocation of two UK patents alleged by J&J to cover Boston's NIR stent, and was set to challenge the Dutch court's exercise of jurisdiction over English patents.

However, only days before the scheduled High Court hearing in London, J&J withdrew consideration of the UK patent from the Dutch proceedings, rendering Boston's imminent application unnecessary. J&J was ordered to pay Boston's costs. The ultimate trial of the UK actions is scheduled to go before Mr Justice Jacob on 23 March 1998.

Michael Burdon, partner at Eversheds, which is representing Boston, highlights the jurisdictional problems left by the unresolved case: "Situations similar to this will continue to arise until a carefully considered procedure for dealing with pan-European patent infringement actions has been established," he said.