Service of Process in Germany After Brexit - Seraphine Ltd v Mamarella GmbH

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Jane Lambert

Intellectual Property Enterprise Court (Michael Tappin KC) Seraphine Ltd v Mamarella GmbH [2024] EWHC 425 (IPEC) (1 March 2024)

As is well known, our good friends on the other side of the North Sea are renowned for their sense of humour.  Since I have to write an article on the riveting subject of service of process in Germany after Brexit I thought it would be fun to share this clip with you,   It is repeated on German television every New Year's Eve.  His Majesty the King referred to it in his speech at a banquet in his honour on his recent state visit.  I was introduced to it by a Swiss friend who tells me that it is also popular in Austria and the German-speaking cantons of Switzerland.

The Connection with the Video

This video's connection with the subject matter of this article is that the procedure for serving process in EU member states is set out in Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast).  That regulation ceased to apply to the United Kingdom at 23:00 on New Year's Eve in 2020, the same evening as the "Dinner for One" broadcast.  The Lugano Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters OJ L 339, 21.12.2007, p. 3–41 contains very similar provisions to Regulation 1215/2012 and HM Government applied to rejoin it.  Iceland, Liechtenstein and Switzerland would have countenanced British membership but not the European Commission (see EU Commission rejects the UK's Application to rejoin Lugano on 6 May 2021).

The Litigation

Seraphine Ltd. ("Seraphine") manufactures a range of maternity garments. Mamarella GmbH ("Mamarella") distributes such clothing in Germany. Seraphine alleged that Mamarella had infringed unregistered Community designs that it claims.  It issued proceedings in the Intellectual Property Enterprise Court ("IPEC") on 13 June 2023.

The Applications 

Seraphine attempted to serve these proceedings on Mamarella without the court's permission relying on the Anglo-German Convention of 20 March 1928 on Legal Proceedings in Civil and Commercial Matters.  Mamarella applied for service to be set aside on 17 July 2023.  Seraphin served Mamarella again under the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters whereupon Mamarella issued another application challenging the jurisdiction of the court and requesting a stay pending proceedings in Germany.  Seraphine issued its own application for permission to amend its claim form and particulars of claim and both parties sought leave to adduce expert evidence on German law in relation to the stay application.  Those applications came on before Mr Michael Tappin KC sitting as a deputy judge of the High Court on 26 Feb 2024.  He handed down judgment on 1 March 2024 (see Seraphine Ltd v Mamarella GmbH [2024] EWHC 425 (IPEC)).

Choice of Jurisdiction Clause

CPR6.33 sets out a number of grounds under which a claim form can be served outside the United Kingdom without the permission of the court.  One of them is CPR6.33 (2B) (b):

"The claimant may serve the claim form on a defendant outside the United Kingdom where, for each claim made against the defendant to be served and included in the claim form—
....................................
(b) a contract contains a term to the effect that the court shall have jurisdiction to determine that claim;"

Mr Tappin said that it was common ground that the Supreme Court in Four Seasons Holdings Inc v Brownlie [2017] UKSC 80 and Goldman Sachs International v Novo Banco SA [2018] UKSC 34 and the Court of Appeal in Kaefer Aislamientos SA de CV v AMS Drilling Mexico SA de CV [2019] EWCA Civ 10 had set the following test when addressing that rule:

"(i) that the claimant must supply a plausible evidential basis for the application of a relevant jurisdictional gateway; (ii) that if there is an issue of fact about it, or some other reason for doubting whether it applies, the Court must take a view on the material available if it can reliably do so; but (iii) the nature of the issue and the limitations of the material available at the interlocutory stage may be such that no reliable assessment can be made, in which case there is a good arguable case for the application of the gateway if there is a plausible (albeit contested) evidential basis for it."

Mr Tappin observed that the Court of Appeal had added at para [9 of his judgment that:

"(a) a "plausible evidential basis" is an evidential basis showing that the claimant has the better argument and the burden of proof is on the claimant, (b) the court should seek to overcome evidential difficulties and arrive at a conclusion if it 'reliably' can using judicial common sense and pragmatism, (c) part (iii) of the test applies where the court is simply unable to form a conclusion on the evidence before it as to who has the better argument; to an extent it moves away from a relative test and introduces a test combining good arguable case and plausibility of evidence."

Whether there was a Contract

Seraphine relied on a set of standard terms and conditions some of which had been struck out.  It was headed "Seraphine Limited Terms and conditions of sale" and had been signed by both parties.  Clause 25 of those terms provided: 

"(a) The Contract and any dispute or claim arising out of or in connection with it or its subject matter or formation (whether or not such dispute or claim is contractual) shall be governed by, and construed in accordance with, the laws of England and Wales.

(b) The Company and the Buyer irrevocably agree that, subject to the following sentence, the courts of England and Wales shall have exclusive jurisdiction over any claim or matter arising under or in connection with the Contract (whether or not such dispute or claim is contractual) and that accordingly any proceedings in respect of any such claim or matter shall be brought in such courts. Nothing in the proceedings [sic] sentence shall limit the Company's right to take proceedings against the Buyer in any other court of competent jurisdiction."

Seraphine contended that the alleged infringement of its unregistered Community designs was a breach of contract because clause 15 (a) of those terms and conditions stated that:

"The Buyer shall ensure that each reference to and use of any of the Company's IPR by the Buyer is in a manner from time to time approved by the Company and is accompanied by an acknowledgement, in a form approved in writing by the Company, that the same is IPR of the Company."

Mamarella contended that the terms only applied to "Contracts" that had been made upon the acceptance of "Orders" as defined by clause 2 of the terms.  It conceded that it had placed orders but these fell outside that definition.   It followed that the contracts formed upon the acceptance of the orders were not "Contracts" and that clause 25 did not apply to them.

Mr Tappin was not persuaded by Mamarella's argument.  It was inconsistent with a provision that the terms override any terms or conditions submitted proposed or stipulated by the buyer in whatever form and at whatever time, whether written or oral, which are expressly waived and excluded.  Mamarella had ordered goods from Seraphine Mamaerlla had also relied on the terms in a separate dispute over the performance of an order.  He held at para [24] of his judgment that Seraphine had a good arguable case that the orders that it had accepted fell within the agreed terms including the exclusive jurisdiction clause.  He concluded at [28] that  Seraphine was entitled to serve the proceedings out of the jurisdiction without the court's permission.

Other Directions

    
The deputy judge gave permission to Seraphine to amend its particulars of claim to state how it had acquired unregistered Community design rights in the designs that were already the subject of a claim.  However, he refused to allow Seraphone to claim infringement of unregistered Community designs in earlier designs as there was no evidence that Mamarella had accepted terms containing an exclusive jurisdiction clause in respect of disputes over those earlier designs.   

As Mamarella had consented to an exclusive jurisdiction clause Mr Tappin refused a stay pending proceedings in Germany either on forum non conveniens or case management grounds.   It followed that there was no longer a need to consider either side's application for expert evidence on German law relating to a stay.

Finally, the deputy judge recorded at para [40] of his judgment that neither party had pressed him to determine whether Seraphine's purported service under the 1928 Convention was valid.

Further Information

Anyone wishing to discuss this article further may call me on +44 (0)20 7404 5252 during normal UK business hours or send me a message through my contact page.

Milan steps into London's Shoes to host a Section of the Central Division of the UPC's Court of First Instance

Author Francesco Ungaro Licence CCO 1.0 Deed Source Wikimedia

 

Jane Lambert: 

It is ironic that the government of one of the countries that challenged the unitary patent and the establishment of the Unified Patent Court in Joined Cases C-274/11 and C-295/11, Kingdom of Spain and another v European Commission and others : [2013] EUECJ C-274/11 has just signed an agreement with the Unified Patent Court for Milan to host a section of the Central Division of the Court of First Instance of the Unified Patent Court (see The Italian Ministry of Foreign Affairs and International Cooperation's press release of 26 Jan 2024 Headquarters Agreement signed between Italy and the Unified Patent Court).

Painful though this announcement is for many of us who had been looking forward to practising before a pan-European patent court for the better part of our lives it was an inevitable consequence of the British government's reversal of policy on the Unified Patent Court between 2018 and 2020 (see Jane Lambert Volte-Face on the Unified Patent Court Agreement 29 Feb 2020 NIPC News).  In his capacity as Foreign Secretary the former MP, Boris Johnson, deposited an instrument of ratification of the agreement on World Intellectual Property Day 2018 which was nearly two years after the brexit referendum.  As soon as he became Prime Minister less than 2 years later he withdrew this country from the agreement.

The decision of the Administrative Committee of the Unified Patent Court to change all references to London in the UPC Agreement to references to Milan pursuant to art 87 of the Agreement was taken on 26 June 2023.  The launch of the UPC appears to have been a great success.  According to a report on the caseload of the court dated 1 Feb 2024  the Court of First Instance has received a total number of 217 cases and the Court of Appeal has received 11 appeals.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK business hours or send me a message on my contact form.

The REUL (Revocation and Reform) Act 2023 - Fourth Update

Jane Lambert

This post should be read in conjunction with Retained EU Law (Revocation and Reform) Bill, my first, second and third updates on the legislation and How Brexit has changed IP Law.  We are now in the sunset period and the legislation in Schedule 1 of the Rerailed EU (Revocation and Reform) Act 2023 is no longer part of our law.  This repeal is nothing like as extensive as the revocation of all EU-derived subordinate legislation and retained direct EU legislation as originally intended but it is still substantial.  The retained EU law that has not been revoked is now known as "assimilated law" by virtue of s.5 (1) of the Act.  

In Retained EU Law (Revocation and Reform) Bill I warned:

"This bill, if passed, is likely to affect intellectual property law in the United Kingdom because much of that law implements EU legislation and case law."

Because of amendments to the Bill as it passed through Parliament the effect on intellectual property has been much more limited than I had feared.   Of the 86 items of retained EU law that the Intellectual Property Office has identified, only 8 have been included in Schedule 1 of the Act.   These are highlighted in grey in the IPO's guidance Retained EU law for Intellectual Property which it updated on 1 Jan 2024.  In Intellectual property and Retained European Union Law: the facts those instruments were described as "either inoperable, superseded by other domestic legislation or were no longer relevant." The guidance adds that their revocation has not altered the policy effect of IP law.

The legislation in Retained EU law for Intellectual Property that is not highlighted survives as assimilated law.  However, its interpretation is affected by s.3 which abolishes the supremacy of EU law, s.4 which abolishes general principles of EU law and s.6 on the role of the courts.   

Judgments of the Court of Justice of the European Union ("the CJEU") and the General Court before 31 Dec 2020 are now known as "assimilated case law" pursuant to s.5 (1). The Court of Appeal and certain other courts in the UK and its component nations had the power to depart from the judgments of the CJEU and General Court under the European Union (Withdrawal) Act 2018 as amended.   The Court of Appeal's decision in ) Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd and another [2023] EWCA Civ 1451 (6 Dec 2023) which I discussed in Trade Marks - Industrial Cleaning Equipment (Southampton) Ltd. v Intelligent Cleaning Equipment Holdings Co. Ltd. and another on 4 Jan 2024 in NIPC Law is an example of the use of that power.  The 2023 Act should make it easier for the courts of this country to depart from assimilated case law in the future.

This will be the last of my updates on the Retained EU (Revocation and Reform) Act 2023  as the Act is now in force and fully implemented.   Anyone wishing to discuss the legislation can call me on 020 7404 5252 during office hours or send me a message through my contact form. 

Netherlands Commercial Court's makes First Asset Preservation Order

Jane Lambert 

The Netherlands Commercial Court is an English-speaking division of the Dutch courts sitting in Amsterdam.   I first mentioned the proposal to set it up in An English Speaking Commercial Court in the Netherlands which appeared in NIPC News on 28 Jan 2017.  It came into being very soon afterwards as I noted in The Netherlands Commercial Court - an English Speaking Court in Amsterdam.  I have been following it ever since.

Earlier in the year, the Court announced that it had made its "first pre-judgment attachment" (NCC News Update No 19).  According to the News Update, it is an interlocutory remedy to enable an intending claimant to secure assets belonging to the intended defendant against which he or she hopes to execute judgment. It sounds very like an English freezing injunction under CPR 25.1 (1) (f).  

According to NCC and Pre-judgment Attachments ("the guidance"), there are two routes by which an order for the securing of an intended defendant's assets may be obtained

"(a)  The creditor submits an application to the court in summary proceedings requesting leave for a pre-judgment attachment" 

 or

"(b) The creditor submits a European form to the court in summary proceedings requesting an European Account Preservation Order (EAPO; EU Regulation No. 655/2014)"

An application for pre-judgment attachment must be made by a Dutch lawyer.  The relevant assets must be in the Netherlands or the intended defendant must be domiciled in that jurisdiction.  The guidance states that "the claim must not be without merit".  It is not clear whether that means a triable issue as in American Cyanamid Co (No 1) v Ethicon Ltd. [1975] AC 396, [1977] FSR 593, [1975] 1 All ER 504, [1975] 2 WLR 316, [1975] UKHL 1, a good prima facie case or something more.  The application is usually made without notice and security is not usually required from the intending claimant.   The application is determined within 24 hours.  An action must be brought within the time specified by the court which is usually 14 days,

An application for an EAPO must be made by a creditor domiciled in an EU member state against an intended defendant domiciled outside the Netherlands in an action in the Dutch courts,  The applicant must provide security and he or she must be likely to succeed in the claim.   Again, the application is made without notice. An action must be brought within 14 days or such other time specified by the court.

Applications to discharge these orders can be made to the Netherlands Commercial Court.

The volume of work done by the Netherlands Commercial Court does not begin to compare with that of the Business and Property Courts of England and Wales but it appears to be growing.   New judges with experience of litigation in English speaking common law countries such as ​Neil Purcell and Marieke Witkamp have been appointed.   Litigation in Amsterdam tends to be considerably less expensive than in London and the Brussels Recast Regulation continues to apply to the Netherlands.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page, 

The REUL (Revocation and Reform) Act 2023 - Third Update

Jane Lambert

 

The Retained EU Law (Revocation and Reform) Bill received royal assent on 29 June 2023 and is now law (see Retained EU Law (Revocation and Reform) Act 2023 ("REUL")),   I outlined the bill in Retained EU Law (Revocation and Reform) Bill on 22 Oct 2022 and tracked its progress in my first and second updates on 6 Dec 2022 and 5 Feb 2023 respectively.

As I said in How Brexit has Changed IP Law on 17 Jan 2022, the European Union (Withdrawal) Act 1988 incorporated  Council regulations and general principles of European law into the laws of England and Wales, Scotland and Northern Ireland at 23|:00 from 31 Dec 2020 when EU law ceased to apply directly to the UK.  The incorporated principles entrenched EU legislation and judgments of the Court of Justice of the European Union into domestic law necessitating special procedures to depart from them.  REUL abolishes the entrenched status of retained EU Law and much of the implementing legislation.

Clause 1 (1) of the Bill, as introduced, would have revoked all "EU-derived subordinate legislation" and "retained direct EU legislation" on 31 Dec 2023.  "EU-derived subordinate legislation" was essentially secondary legislation made under s.2 (2) of, the European Communities Act 1972.  S.1 (1) of the Act limits the revocation to the legislation listed in Sched 1 of the Acr. Part 1 of that schedule lists subordinate legislation and Part 2 retained direct EU legislation.

In Retained EU law for intellectual property, the Intellectual Property Office has listed legislation which is to be revoked  at the end of this year:

• The Artist’s Resale Right (Amendment) Regulations 2009 (SI 2009/2792) 
• The Community Designs (Fees) Rules 2002 (SI 2002/2942) 
• Council Decision of 22 December 1994 on the extension of the legal protection of topographies of semiconductor products to persons from a Member of the World Trade Organization (94/824/EC) 
• Commission Regulation (EC) No 2245/2002 of 21 October 2002, and  
• Regulation (EU) No 386/2012 of 19 April 2012.

The following statutory instruments will take effect from 1 Jan 2024:

• The Design Right, Artist’s Resale Right and Copyright (Amendment) Regulations 2023 and
• The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.

The Unified Patent Court's First Cases

Helsinki

Author Fileri Licence CC BY-SA 3.0 Deed Source Wik (Wikipedia Commons

Jane Lambert

The Unified Patent Court opened its doors on 1 June 2023 (see The Unified Patent Court Opens Today 1 June 2023).  There have already been proceedings in both of the Central Divisions of the Court of First Instance in Paris and Munich as well as the local divisions in Düsseldorf, Hamburg, Helsinki, Milan, Munich and The Hague. There have also been hearings.

One of those hearings was in Helsinki where the court was scheduled to hear an application by the claimant for provisional measures and a preliminary objection from the defendant in an action that the Swiss company AIM Sport Vision AG has brought against Supponor Oy of Finland and others on 21 Sept 2023 (see Upcoming hearing at the UPC Local Division Helsinki posted on 12 Sept 2023).  Readers will recall that AIM Sport Vision AG sued Suppronor Oy in London earlier this year alleging infringement of  EP 3 295 663 B1.   I commented on the trial in Patents - AIM Sport Vision v Supponor on 5 Sept 2023.  According to the presiding judge's order of 28 Aug 2023, AIM Sport Vision complains of infringement of the same patent.

Occado and AutoStore were also against each other in London earlier in the year  (see Autostore Technology AS v Ocado Group Plc and others [2023] EWHC 716 (Pat) (30 March 2023).  I discussed the action in Patents - AutoStore Technology AS v Ocado Group Plc on 16 April 2023 in NIPC Law. Proceedings had been issued by Occado against AutoStore in Milan but these appear to have settled (see the minute of order of 11 Sept 2023).

The proceedings that have taken place so far have ranged from applications for orders for the preservation of evidence to directions for the conduct of the litigations.  They have been conducted in Dutch and Italian as well as English, French and German,  Anyone wishing to read those decisions will find them at "Decisions and Orders" on the Unified Patent Court website,

Readers wishing to discuss this topic may call me on +44 (0)20 7494 5252 during normal office hours or message me through my contact page at all other times.

Trade and Cooperation Agreement Council

Author David Howard Licence CC BY-SA 2.0 Source Wikimedia Commons

The Foreign and Commonwealth Office at 23:00 on 31 Jan 2020

 

Jane Lambert

Art 7 of the EU-UK Trade and Cooperation Agreement which I outlined in The Draft EU-UK Trade and Cooperation Agreement: What We Know So Far on 26 Dec 2020 established a Partnership Council comprising representatives of the European Union and the United Kingdom to oversee the attainment of the objectives of this Agreement and any supplementing agreement.  That Council held its second meeting on 24 March 2023 the minutes of which were published on 4 July 2023.

The agenda which was adopted by the Council covered energy, regulation, security, Union programmes and any other business. The topic of most interest to readers was regulation because it concerned intellectual property,  the Retained EI Law (Revocation and Reform) Bill and the Bill of Rights Bill. 

On IP,  Commission Vice-President Maroš Šefčovič (Co-chair of the Council) indicated that continued cooperation between the EU and UK Intellectual Property Offices was important.  He said that he was ready to make contact with the EU IPO to encourage it to cooperate with the UK IPO, in line with the current EU IPO’s practice on cooperation with third counties’ offices, which usually takes place on the basis of memoranda of understanding.

The EU delegation which included Commission officials, officials from the European External Action Service and Delegation of the EU to the UK and representatives of the EU member states as well as Mr Šefčovič expressed concerns as regards the UK’s Retained EU Law (REUL) Bill and the Bill of Rights Bill. They feared that the Retained EU Law Bill could undermine the UK's obligations under the Withdrawal and Trade and Cooperation Agreements in that the legislation could lead to significant regulatory divergence. In respect of the Bill of Rights Bill, the EU representatives said that it raised questions for them in relation to the right to an effective remedy and the binding character of the decisions of the European Court of Human Rights in the UK. The EU representatives requested that UK and EU technical experts meet to discuss the REUL Bill further.  The Rt Hon James Cleverly MP, Secretary of State for Foreign, Commonwealth and Development Affairs who led the British delegation tried to reassure the European delegates that the British approach was consistent with its international obligations.  He referred to the UK's high standards across areas such as the environment, workers’ rights, health and safety.

The EU delegation expressed the view that the agreement on the Windsor Framework allowed the parties to deepen cooperation in line with the terms agreed under the Trade and Cooperation Agreement.   UK participation in Horizon Europe, the Euratom Research and Training Programme, Fusion for Energy/ITER, Copernicus and Space Surveillance and Tracking, as of 2023, could now happen swiftly, based on the quick agreement of limited amendments to the draft Protocols. The EU also noted that the UK should not be bound to make financial contributions for 2021 and 2022, ie when it was not associated with those programmes.

The British delegation raised the question of British artists who wished to tour in the EU and vice versa.  They said that they were keen to protect the broader contribution that touring creatives brought to the UK and EU.  The EU delegation replied that this issue had been covered at length in previous occasions. The situation of UK touring artists was the result of the UK leaving the single market, including the free movement of persons, and the customs union.

Although the minutes reveal sharp differences between the parties on such issues as the REUL and Bill of Rights Bills and facilitating touring for British artists the discussions seem to have been a lot less fractious than in previous years.  That is done to the Windsor Framework which Mr  Šefčovič called "a turning point in how both parties work together collaboratively and constructively."

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page.

Rachel Reeves on Brexit

University of Bradford

Author Chemical Engineer  Licence CC BY-SA 4.0  Source Wikimedia Commons

 

Jane Lambert

Yesterday a "Creative Economic Conference" took place at the University of Bradford as part of the Bradford Literature Festival.  One of the events was an interview of the Rt Hon Rachel Reeves MP by the economist, Mr Andy Haldane. I attended the interview because Ms Reeves is likely to be the next Chancellor of the Exchequer should the Labour Party win the next general election.  Sadly, it took place at the same time as two other events I would gladly have attended, a Roundtable Discussion on Artificial Intelligence and a Trade Relations Roundtable on Business with India.

In her interview, Ms Reeves described the UK's Trade and Cooperation Agreement as a "botched deal" so I asked her how the Labour Party proposed to improve the deal were it to win the next general election in the short Q&A that followed.  To her credit, the Shadow Chancellor gave me a very straight answer.  She did not promise negotiations to rejoin either the European Union or even the Single Market or Customs Arrangement but she did seek improvements to the Agreement in such areas as veterinary controls, the mutual recognition of professional qualifications and participating in Horizon Europe again.

That was not enough to persuade me to support the Labour Party but it is probably as much as any of the unionist parties in the UK can offer.  Scottish, Northern Irish and probably Welsh nationalists can go further because the Conservative Party is weak in those nations and the prospect of rejoining the EU is part of the case for secession or annexation by the Republic of Ireland.  Until there is a consensus for rejoining the EU in England the remaining member EU member states will not take an application from the UK to rejoin the EU seriously. Such a consensus would require a change of attitude towards the EU on the part of the Conservative Party.  Similar changes of attitude on similarly important issues have occurred in the past but a volte-face on EU membership on less favourable terms than before is not on the cards yet.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.

The Unified Patent Court opens Today

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Jane Lambert

The Unified Patent Court opens its doors today.  It is now possible to apply for a European patent that covers the combined territories of Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden known as a "unitary patent". Any dispute as to the validity of a unitary patent or whether it has been infringed can be determined by a single tribunal at the Central Division of the Court of First Instance in Paris or Munich or its local or regional divisions in the above contracting states.  Appeals from the judgments of that Court will lie to the Court of Appeal in Luxembourg.

The British government had signed the Agreement on a Unified Patent Court on 19 Feb 2013. Parliament had passed the Intellectual Property Act 2014  to enable the United Kingdom to ratify the Agreement.  On World Intellectual Property Day 2018, the Rt Hon Boris Johnson MP, in his capacity as Foreign Secretary, had actually deposited HM Government's instrument of ratification two years after the brexit referendum (see British Ratification of the UPC Agreement - Possibly the best thing to happen on World Intellectual Property Day 26 April 2018 NIPC News).  London was to host part of the Central Division of the Court of First Instance as well as one of possibly several local divisions for the United Kingdom.

The British government withdrew from the Agreement in 2020  (see Volte-Face on the Unified Patent Court Agreement 29 Feb 2020 NIPC News).  In the 7 years before the UK's withdrawal British lawyers and officials had contributed much to the Unified Patent Court and unitary patent project.  It is possible to detect British influence in similarities with the Civil Procedure Rules in some of the Rules of Procedure of the Unified Patent Court and in the templates or precedents for the orders of the Unified Patent Court.

Even though the UK is no longer participating in the project a single patent covering the territories of the three largest economies of the European Union will interest many British businesses.   As the Court will interpret and apply the European Patent Convention to which this country remains a party, its judgments will be of strong persuasive authority.  Perhaps for the same reason some of the decisions of our courts will be considered and in some cases followed by the Unified Patent Court.  Because of its importance to business owners and lawyers in the UK, I will follow and discuss the Court's judgments and other developments relating to unitary patents.

Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page,

How much Work is London losing to Continental English Speaking Commercial Courts?

 

Jane Lambert

In English Speaking Commercial Courts in France, Germany and the Netherlands bid for London's Work which I posted on 4 April 2021, I discussed how the UK's withdrawal from the European Union had been seen as an opportunity for lawyers and judicial authorities in France, the Netherlands and other countries to grab some of London's lucrative, international, commercial litigation work.  The Dutch authorities responded by establishing the Netherlands Commercial Court as an English-speaking commercial in Amsterdam.  In Paris, some of the proceedings before the International Chamber of the Paris Commercial Court and an International Chamber of the Paris Court of Appeal take place in English (see Présentation générale CCIP-CA / The ICCP-CA.  There are also proposals to set up similar English-speaking commercial courts in Belgium, Germany and Switzerland.

This month the Netherlands Commercial Court published a News Update which contained an article entitled Brexit: Europe sees emergence of specialist commercial courts to compete with the UK (Chessa, IBA).  It refers to a short article by Sara Chessa dated 17 March 2023 on the International Bar Association's website. Although the News Update quotes the opinion of Mr Martin Poelman that the Netherlands Commercial Court has very good judges whose judgments are perceived as good and solid and Dries Beljon's view that litigation in that court is quicker and cheaper in that court than elsewhere, Ms Chessa's article does not suggest that the Dutch or French courts are taking much (if any) work away from London.  She notes that between its opening in 2019 and 2022, the Netherlands Commercial Court saw only 16 cases, according to a publication by the Court,   If she was referring to the judgments page of the court's website there have been 16 judgments between opening and 23 April 2023.  Ms Chessa also quotes Nick Vineall KC who denied that London had lost any business at all since Brexit and that if anything the courts and arbitrators are busier than ever.

It is, of course, very early days.   Litigation under the inquisitorial system is obviously cheaper than under a procedure where contestant law firms leave no stone unturned.  Also, exclusion from Lugano will impede the enforcement of judgments of the UK's courts in the EU (see EU Commission rejects the UK's Application to rejoin Lugano 6 May 2021).  As an intellectual property lawyer, I am anxious that the Netherlands Commercial Court is pitching for soft IP work with its factsheet NCC and Intellectual Property.  The court's most recent judgment concerns intellectual property and ownership of data (see Diamedica Therapeutics Inc. v Pharmaceutical Research Associates Group BV NCC 22/018 (C/13/730389) 23 April 2023). From 1 June 2023, the Patents Court and Intellectual Property Enterprise Court face competition from the Unified Patent Court.

Apologists for brexit contend that any loss of business in Europe will be more than made up by increasing business with the rest of the world.  That is yet to be borne out by experience but even if it turns out to be the case for British business as a whole it may not turn out to be so for the legal services sector.   In the EU England and Wales was by far the largest English-speaking common law jurisdiction.   In the wider world, London faces competition from other powerful English-speaking common law courts in the USA, the Commonwealth, the Arabian Gulf and even Kazakhstan.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page. 

Unified Patent Court Update

Jane Lambert

 

Much has happened since my last article on the Unified Patent Court ("UPC").  The court will open for business on 1 June 2023 and not on 1 April 2023 as I stated on 22 Oct 2022 to allow users more time to prepare themselves for the strong authentication which will be required to access the court's case management system ("the CMS") and to sign documents (see Adjustment of the timeline – Start of the Sunrise Period on 1 March 2023 on the UPC's website 5 Dec 2022). The new website which I mentioned in my previous article is now up and running at https://www.unified-patent-court.org/en.

The new website displays 

• photos of the UPC's buildings, 
• a map of Europe showing the EU member states in blue, member states that have signed the Unified Patent Court Agreement in a darker shade of blue, the states in which the agreement will come into force on 1 June 2023 in dark blue and everywhere else including the UK in grey,
• information on opt-out, registration as a representative before the UPC and FAQ,
• the latest news, and
• important links 

on its home page,

The court's judges whose appointment I mentioned in my previous article have now undergone advanced preparatory training in the UPC's Rules of Procedure (see Launch of the first training for all UPC appointed judges 17 Jan 2023).  Training in the court's internal rules and practice was also given to court staff immediately afterwards (see Update on UPC Training Activities 10 Feb 2023).  Alexander Ramsay, who chaired the committee that handled all the preparatory work, has been appointed the court's first Registrar and Axel Jacobi has been appointed as his deputy (see The Unified Patent Court appoints its first Registrar and Deputy-Registrar  19 Jan 2023).

Germany deposited its instrument of ratification of the UPC Agreement on 17 Feb 2023 nearly 10 years after it had signed it thereby permitting the sunrise period to start on 1 March 2023 (see Germany ratifies the Agreement on a Unified Patent Court  21 Feb 2023).  The sunrise period has now started and holders of European patents can now decide whether they want to opt out of the exclusive jurisdiction of the UPC pursuant to art 83 (3) of the UPC Agreement.   To help them to do so, the court has provided information on filing an opt-out and the following FAQ.

Those who are eligible to practise before the UPC may now apply to be listed as representatives before the court pursuant to art 48 (3) of the UPC agreement.  These include 

• lawyers authorized to practise before the courts of a Contracting Member State pursuant to art 48 (1) and 
• European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to art 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate pursuant to art 48 (2).  

Art 2 (c) defines "Contracting Member State" as  "a Member State party to this Agreement".  Rgar would seem to include countries that have signed the UPC Agreement but not yet ratified it such as the Republic of Ireland.  In this regard, readers are reminded that James Bridgeman SC is a member of these chambers

Anyone requiring further information may call me on +44 (0)20 7404 5252 or send me a message through my contact page.