Intellectual Property Jurisdiction Strategies
| DOI | 10.1093/jiplp/jpy040 |
| Date | 09 May 2018 |
| Pages | 514-515 |
| Year | 2018 |
| Published By | Oxford University Press |
Intellectual property jurisdiction
strategies
Camille Auvret*
Intellectual Property Jurisdiction Strategies: Where to
Litigate Unitary Rights vs National Rights in the EU
Torsten Bjørn Larsen
Edward Elgar, 2017
ISBN: 978 1 78643 750 1, hard cover, pp. 336
Price: £125.00
‘On the surface of the earth all places are not equivalent;
there are some that you must flee, and others that must be
the object of your research; all must be perfectly known to
you’.
1
Before engaging in any litigation each practitioner
should ask himself where and how to initiate a dispute.
The choice of jurisdiction will have an impact on the
applicable law, which itself can be an essential element to
win a case. It will determine the litigation venue, the lan-
guage of procedure as well as logistics such as translation
of documents which are also essential for comfort and
time and cost management. All in all, the choice of juris-
diction might be decisive for the plaintiff and the defend-
ant if they know how to use it to their advantage.
The book Intellectual Property Jurisdiction Strategies
explores the different procedural strategies when right-
holders and practitioners are litigating on the basis of a
national or a unitary title. With the development of com-
plex intellectual property portfolio strategies involving
several titles in different countries, jurisdiction tactics
have become highly topical and timely for intellectual
property litigation in Europe and elsewhere. With the cre-
ation of the European Union Trade Mark and
Community Design systems, practitioners in the European
Union have been used for more than a decade to set up
strategies depending on the unitary or the national nature
of the rights at issue. The creation of the unitary patent
and the Unitary Patent Court will also expand the playing
field of patent practitioners and will offer them new
parameters to explore innovative litigation strategies.
Already today, one of the most striking example of juris-
diction strategies has occurred in the field of patents,
notably in the dispute between Apple and Samsung, with
Samsung successfully choosing to bring an action for a
declaration of non-infringement against Apple in the UK,
where it had domiciliation and where courts have unre-
stricted jurisdiction.
The book concentrates on European procedural law in
relation to intellectual property rights for which a European
unitary title has been created (trade marks, designs, plant
variety protection, patents). Therefore, it does not cover liti-
gation strategies in the field of copyright or trade secrets,
for instance. The book primarily focuses on procedural laws
governing unitary titles since the author could not reason-
ably enter into the specificities of each national law. It does
not address either in-depth jurisdiction issues arising in
case the claimant or the defendant originates from a third
country, as this would involve undertaking a comparative
analysis of different jurisdiction rules.
The author gives a practical overview of all the jurisdic-
tion rules for the different intellectual property rights. His
analysis is wide-ranging and considers all the procedural
aspects of unitary laws. Three litigation actions are particu-
larly considered: infringement actions, non-infringement
actions (where the infringer acts as the claimant and the
rightholder as the defendant) and invalidity actions.
Actions at administrative level (on oppositions or validity)
as well as actions at court level not involving an element of
infringement or preliminary injunctions are however not
been analysed. The author performs a comprehensive com-
parative analysis of the different legislations available to the
plaintiffs and the defendants, including through a percep-
tive analysis of the interplay between the specific rules in
the field of intellectual property and the European legisla-
tions on private international law. This is especially valuable
for readers who want to keep abreast of the latest changes
introduced by new legislations such as the European Trade
Mark Regulation (EU) 2015/2424 or the Brussels I
Regulation recast (REGULATION (EU) No 1215/2012).
The author first examines the different jurisdiction
instruments as well as the number of jurisdiction rules
available to the plaintiff. He then explores the nature of
the different jurisdiction rules. Then, the conditions of the
defendant’s domicile rule are addressed for the different
intellectual property rights. The author conducts a similar
analysis for the establishment rule and the claimant’s
domicile rule. He continues by exploring the multiple
defendants’ rule and the forum delicti rule before studying
more specific procedures such as central division rules or
the exclusive jurisdiction rule.
The book lends itself to practical use for its readers. A
comprehensive table summarizing the different options
available to claimants and defendants, either acting as
rightholders or alleged infringers, is presented at the end
of every chapter. For each jurisdiction rule, it will allow
the reader to quickly grasp the key elements to build an
efficient jurisdiction strategy. In addition, the author
* Email: camille.auvret@ec.europa.eu. The views expressed in the article
are only personal opinions which are the sole responsibility of the author.
They in no way represent the view of the European Commission and its
services.
1 Sun Tzu, The Art of War, Translation Father (Pe`re) Amiot, 1772.
514 IP IN REVIEW Journal of Intellectual Property Law & Practice, 2018, Vol. 13, No. 6
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