Research In Motion UK Ltd v Visto Corp.

Under Article 28 of Council Regulation 44/2001, proceedings are related where they are so closely connected that separate determination creates a risk of irreconcilable judgments. The court first seised may determine the issues concerning its own proceedings and jurisdiction. A later counterclaim alleging that proceedings in another member state were abusive, or were brought without reasonable or probable cause, is related to those foreign proceedings where liability depends on the foreign court lacking jurisdiction. The court second seised should not award damages for allegedly improper use of the foreign process, since that would indirectly interfere with the foreign court’s jurisdiction.

RIM commenced English proceedings seeking a declaration of non-infringement concerning the United Kingdom designation of Visto’s European patent. It subsequently commenced proceedings in Italy seeking revocation of the Italian designation and declarations concerning several national designations.

Visto counterclaimed damages under Article 96 of the Italian Civil Procedure Code, alternatively in the tort of abuse of process, alleging that the Italian proceedings were unlawful and abusive. RIM applied under Article 28 of Council Regulation 44/2001 for dismissal or a stay. RIM also undertook to discontinue its English claim. The central issue was which court was first seised and whether the counterclaim and Italian proceedings were related.

1. The counterclaim, insofar as it alleged abuse of the Italian process, was dismissed. RIM’s undertaking to discontinue its English non-infringement claim was accepted for the purposes of the application.

2. Article 28 of Council Regulation 44/2001 applies only where there are related actions and the court asked to stay or decline jurisdiction is not the court first seised. Related actions are proceedings so closely connected that separate determination creates a risk of irreconcilable judgments.

3. The counterclaim was an action in its own right. Once the English claim was removed, the relevant proceedings were Visto’s counterclaim and RIM’s Italian proceedings. The Italian court was plainly first seised because the counterclaim depended on the Italian proceedings having been commenced.

4. The Italian court was the appropriate forum to determine whether it had jurisdiction and whether its process had been abused. The claim under Article 96 of the Italian Civil Procedure Code could not succeed unless the Italian court first dismissed the Italian action or held that it lacked jurisdiction. The same jurisdictional issue was an essential foundation of the English abuse-of-process claim. The proceedings were therefore related.

5. Applying the broad common-sense approach to the judgment regulation, the fact that the abuse allegation arose only after the Italian proceedings began did not prevent the Italian court from being first seised of the issue concerning its own process. The decision in Turner v Grovit [2005] 1 A.C. 101 provided an additional reason: awarding damages for improperly invoking a foreign court would indirectly interfere with that court’s jurisdiction.

6. Even without the discontinuance undertaking, the pleaded matters would not have provided a good defence to the English non-infringement claim. It was not the function of the English court to investigate whether the process of a foreign court had been abused, particularly where the patent rights were territorial and infringement and validity proceedings had to be brought member state by member state.