Jurisdiction and Intellectual Property

Written jurisdiction clause

para. 14-020 In Knorr-Bremse [2008] EWHC 156, the High Court of England held that a jurisdiction clause in a settlement agreement entered into between two parent companies did not bind a UK subsidiary. The defendant, in seeking a stay of the proceedings, argued that under German law (the law of the settlement agreement), the settlement agreement would bind a subsidiary. In applying C-269/95 Benincasa v. Dentalkit Srl [1997] E.C.R I-3767,[1997] E.T.M.R. 447, the Court rejected that argument. It held that in interpreting whether Art.23 of the Judgments Regulation was applicable, such had to be interpreted by reference to Community law and not to German law (which was the law of the settlement agreement). The court held that Art.23 had to be interpreted strictly as being only applicable to the parties to the agreement.

Lis alibi pendens

para 14-049. See Reseach in Motion v Visto [2008] EWCA 153 for the meaning of "related actions". See also News Article "ARt.28, Jurisdiction Regulation and Related Actions".

Infringement action where validity is put in issue

para.14-067 See Knorr-Bremse [2008] EWHC 156 where the High Court of England held that, on an application disputing jurisdiction, that it was not necessary that validity had been formally put in issue.

Determination of jurisdictional issues under the Brussels Convention

para 14-099 In Canada Trust v Stolzenberg [1997] EWCA 2592, the Court of Appeal held, in applying Seaconsar Ltd. V Bank Markazi [1994] 1 AC 438 (House of Lords), that the threshold was the same whether or not the preliminary jurisdictional issue was likely to be tried at the trial of the action. The Court said that Lord Goff's remarks in Seaconsar must have implicitly rejected the approach taken by Staughton LJ's remarks in Attcock Cement v Romanian Bank should not be followed. See also Knorr-Bremse [2008] EWHC 156