Tech 21 UK Ltd v Logitech Europe SA

For jurisdiction challenges based on the Lugano Convention or the Judgments Regulation, the court must distinguish factual jurisdictional disputes from issues of law or construction. It normally applies the good arguable case test to factual disputes, but decides legal and documentary construction issues itself.

A declaration of non-infringement under the Community Designs Regulation must be brought against the person being sued, ordinarily in that person’s state of domicile or establishment. A groundless-threats claim under the Community Design Regulations 2005 is instead a claim concerning civil liability or unfair competition. It is not transformed into a declaration of non-infringement merely because infringement may be considered in answer to the claim.

Whether a letter threatens UK proceedings is assessed objectively, by reference to a reasonable recipient properly advised on the applicable jurisdiction rules. The recipient’s subjective reaction is inadmissible.

Tech 21, a UK company, sought declarations that its Impact Folio tablet cases did not infringe Logitech’s alleged Community or UK unregistered design rights. It also alleged that a letter from Logitech’s German solicitors constituted unjustifiable threats to bring Community design infringement proceedings in the UK.

Logitech, a Swiss company with establishments in the Netherlands and Croatia, challenged the jurisdiction of the High Court. The principal issues were whether the Community Designs Regulation governed the non-infringement claim, whether the letter threatened UK proceedings, whether the Lugano Convention applied to the threats claim, and whether there was a real and present dispute concerning UK unregistered design right.

1. Jurisdictional test. Where jurisdiction depends on disputed facts unrelated to the merits, the court applies the good arguable case test. Where the jurisdictional issue depends on facts relevant to the merits, the same test applies with particularly careful scrutiny. Issues of law or document construction are normally decided by the court without applying that test.
2. Community design declaration. Under arts 81(b) and 82(1) of the Council Regulation (EC) No 6/2002 on Community designs, the defendant is the person being sued, not the claimant merely because the proceedings are defensive. The claim for a declaration of non-infringement therefore had to be brought in a Member State where Logitech had an establishment. This Court had no jurisdiction over it.
3. Threatening UK proceedings. The letter was to be construed objectively. Evidence of Tech21’s subjective understanding was inadmissible. The reasonable recipient, properly advised on the Community design jurisdiction rules, would have understood the letter as indicating at least a realistic possibility of UK proceedings, including proceedings needed to obtain Europe-wide relief.
4. Nature of the threats claim. The 2007 Lugano Convention applied unless inconsistent with specific provisions of the Community Designs Regulation. A claim under regulation 2 of the Community Design Regulations 2005 was a claim concerning civil liability or unfair competition, not a claim within art 81(b). It therefore fell within the Lugano Convention’s tort jurisdiction provisions.
5. UK design right. The court had to be satisfied on a good arguable case that, when proceedings began, there was a real and present dispute concerning infringement of UK unregistered design right vested in Logitech. The letter and evidence did not establish that Logitech could own such right under ss 218–220 of the Copyright, Designs and Patents Act 1988. The Court therefore had no jurisdiction over that declaration claim.
6. The conclusions were recorded at para 124. The parties were invited to agree the consequential order, failing which further submissions would be heard.