Celem SA & Anor v Alcon Electronics Pvt Ltd.

Permission to serve proceedings out of the jurisdiction requires a serious issue to be tried, or a reasonable prospect of success, together with satisfaction of the relevant jurisdictional gateway and consideration of forum conveniens.

For joint tortfeasorship in patent infringement, mere supply of infringing goods, knowledge of their intended destination, or facilitation is insufficient. The alleged joint tortfeasor must be sufficiently involved in the infringement to have made the infringing act its own. A supplier’s redesign of a product specifically for a potential customer, followed by provision of the redesigned product in the United Kingdom, may provide a sufficiently strong case for that issue to proceed to trial.

The claimants alleged that an Indian manufacturer had infringed their patent and other intellectual property rights through products and technical brochures supplied or brought into the United Kingdom. They also alleged that the manufacturer was jointly liable for infringing acts carried out by an English distributor.

The defendant applied to discharge an order permitting service of the claim form in India. The court considered whether there was a serious issue to be tried, whether the claims fell within a qualifying jurisdictional gateway, and whether England was an appropriate forum. The central issues included importation, disposal, joint tortfeasorship and the significance of a product redesigned for a United Kingdom customer.

1. Serious issue and jurisdictional gateway. The claimants had to show a serious issue to be tried, equivalently a reasonable prospect of success. If that threshold was met, it was common ground that the claim fell within one or more qualifying paragraphs of CPR 6.20.
2. Second sample. The evidence gave the claimants a serious case that the defendant had imported and disposed of the second sample in the United Kingdom. The defendant’s own evidence indicated that it had redesigned the sample after the first sample failed and provided the new model to the potential customer.
3. Joint tortfeasorship. The Court of Appeal reasoning in SABAF v MFI established that mere supply of goods was insufficient. The alleged joint tortfeasor must have been so involved in the commission of the tort as to have made the infringing act its own. Common design, concerted action or another combination to secure the infringing acts could satisfy that requirement. The present evidence was materially stronger than ordinary arm’s-length supply and gave the claimants a good arguable case.
4. Importation and other claims. The court did not decide who imported the first sample or whether passing of title was decisive. Those issues did not need to be resolved because of the second sample and the joint-tortfeasorship case.
5. Forum. England was an appropriate forum. If the patent claim were not heard in England, the claimants were unlikely to obtain redress or protection against future infringement elsewhere. The copyright and unregistered design-right claims should proceed with the patent claim.
6. The application to discharge permission to serve out was refused and the claim was allowed to proceed. Leave to amend the Particulars of Claim was granted without opposition.