Future New Developments Ltd v B & S Patente Und Marken GmbH

Under the Brussels I Regulation, jurisdiction over a cross-border dispute is distinct from the internal allocation of proceedings between domestic tribunals. A tribunal which may lawfully hear proceedings under domestic law can be a “court of a Member State” for the purposes of the Regulation.

For article 24, whether a defendant has entered an appearance is determined by the procedural law of the relevant Member State. The question is assessed objectively. A reservation of jurisdiction is relevant, but it is not conclusive where the defendant’s other conduct can only be understood as acceptance that the dispute should be heard in that Member State. Once an appearance has been entered before one domestic tribunal, article 24 may confer jurisdiction on another tribunal which hears a later stage of the same proceedings under local law.

The claimant sought entitlement to a European patent registered in the defendant’s name. It had first referred the dispute to the UK Intellectual Property Office under section 37 of the Patents Act 1977. The Hearing Officer declined to deal with the reference under section 37(8), directing that the matter was more properly dealt with by a court.

The claimant then issued proceedings in the Intellectual Property Enterprise Court. The defendant challenged jurisdiction, arguing that jurisdiction lay in Germany under the Brussels I Regulation. The claimant relied alternatively on forum conveniens, articles 5(3), 23(1)(b) and 24. The central issue was whether the defendant’s conduct in the IPO proceedings amounted to an appearance giving the English courts jurisdiction under article 24.

1. The jurisdiction challenge was dismissed. The Intellectual Property Enterprise Court had jurisdiction under article 24 of the Brussels I Regulation.
2. The dispute concerned entitlement to a patent, not the liability of the defendant for a tort. The alleged misrepresentation was by a non-party and did not establish that the claim was a matter relating to tort under article 5(3). Article 22(4) was not engaged in a dispute about ownership of registered intellectual property rights.
3. Article 23(1)(b) requires an agreement on jurisdiction evidenced by practices established between the parties. Conduct in litigation is not, without more, such an agreement. Even an unequivocal abandonment of a jurisdiction challenge in the IPO would have been a concession in the proceedings, rather than an agreement formed by an established course of dealing.
4. The IPO was a tribunal which could lawfully hear the proceedings under English law and therefore fell within “a court of a Member State” for article 24. Its procedural rules permitted a jurisdiction challenge. Whether the defendant had entered an appearance depended on local procedural law and was assessed objectively.
5. The defendant had pleaded fully to the merits before the IPO. Its reservation of jurisdiction was equivocal and conditional, while its subsequent conduct indicated that the dispute should be heard in England, initially by the IPO and later by the Patents Court or IPEC. The only reasonable interpretation was that the defendant had entered an appearance. A reservation was not an automatic protection against submission.
6. The IPO proceedings ended when the Hearing Officer declined jurisdiction under section 37(8), and fresh proceedings were issued in the IPEC. That procedural consequence did not remove the effect of the earlier appearance. Article 24 applies to the court first seised and any other domestic tribunal which may hear a stage of the proceedings according to local law. The Regulation must be construed predictably and cannot depend on differing national rules about originating process.
7. Article 24 provides that the court “shall have jurisdiction”. Since article 22 was not engaged and the proceedings before the IPO were not arbitration proceedings excluded by article 1(1), the court was required to accept jurisdiction.

The judgment describes earlier proceedings before the UK Intellectual Property Office. On 23 December 2013, the Hearing Officer declined to deal with the entitlement reference under section 37(8) of the Patents Act 1977, directing that the dispute was more properly dealt with by a court. The claimant then issued fresh proceedings in the IPEC. The defendant’s jurisdiction application was dismissed.