Parainen Pearl Shipping Ltd & Ors v Kristian Gerhard Jebsen Skipsrederi AS & Ors

Jurisdiction under Article 5(3) of the Lugano Convention must be analysed claim by claim. Jurisdiction over a negative declaration concerning one territorial designation of a European patent does not extend automatically to declarations concerning other designations, even where the claims are closely connected or depend on the same alleged exhaustion of patent rights.

The possible recognition and res judicata effect of a judgment in other Contracting States does not enlarge the jurisdiction of the court first seised. Nor does an alleged European-wide exhaustion principle convert claims dependent on national patent law into a single claim. Claims concerning consent as a defence to infringement require separate consideration under the relevant national laws.

The claimants sought negative declarations concerning European Patent No 2 032 426, including declarations of non-infringement of its UK, Finnish and Swedish designations, declarations that the patentees’ rights had been exhausted within the EEA, and declarations that the defendants had consented to use of the patented system.

The defendants applied under CPR Part 11 to set aside service of the claim form, accepting that the court had jurisdiction over the claim concerning the UK designation under Article 5(3) of the Lugano Convention but disputing jurisdiction over claims extending to the other designations. The central issue was whether jurisdiction in respect of the UK designation carried with it jurisdiction over the connected non-UK claims.

1. Jurisdiction under Article 5(3). The court had jurisdiction over the claim for a declaration of non-infringement of the UK designation because the proposed acts could occur in the UK. Article 5(3) permits claims for negative declarations and covers both the place where damage occurred or may occur and the place of the event giving rise to the damage: Case C-523/10 Wintersteiger AG v Products 4U Sondermachinenbau GMBH [EU:C:2012:220] and Case C-133/11 Folien Fischer AG v Ritrama SpA [EU:C:2012:664].
2. Claim-by-claim analysis. Jurisdiction over one claim does not create jurisdiction over another merely because the claims are closely related in fact or law. The Lugano Convention’s jurisdictional rules must be applied separately to each claim. The possibility of parallel proceedings or irreconcilable judgments does not alter that conclusion: AMT Futures Ltd v Marzillier, Dr Meier & Dr Guntner Rechtanwaltgesellschaft mbH [2017] UKSC 13.
3. Exhaustion. The alleged EEA-wide exhaustion of patent rights, based on Case C-187/80 Merck & Co Inc v Stephar BV [1981] ECR 2063 and Joined Cases C-267/95 and C-268/95 Merck & Co Inc v Primecrown Ltd [1996] ECR I-6285, concerned the effect of a decision, not the court’s jurisdiction to determine claims relating to other territorial designations. Recognition and res judicata effect in other States were matters for the courts of those States.
4. Consent. A declaration based on consent raised a different issue from exhaustion. It depended on the relevant national laws governing whether consent constituted a defence to patent infringement. Jurisdiction over the UK claim therefore did not extend to the non-UK consent claims.
5. Order. The court declared that it had jurisdiction over declaration (a), but no jurisdiction over declaration (b), or declarations (c) and (d) insofar as they extended beyond the UK designation. Paragraph 35 and the prayer for relief in the Particulars of Claim were struck out to that extent. The claimants were not required to issue and serve a fresh claim form.

First-instance jurisdiction application. No appellate history was stated in the judgment.