Kenburn Waste Management Ltd v Bergmann
| Jurisdiction | England & Wales |
| Judge | Aldous,Robert Walker,Keene L JJ |
| Judgment Date | 30 January 2002 |
| Date | 30 January 2002 |
| Court | Court of Appeal (Civil Division) |
Court of Appeal (Civil Division).
Aldous, Robert Walker and Keene L JJ.
Philip Punwar (instructed by Reid Minty) for the appellant.
Michael Silverleaf QC and Giles Fernando (instructed by Bird & Bird) for the respondent.
The following cases were referred to in the judgment of Robert Walker LJ:
Boss Group Ltd v Boss France SA [1996] CLC 1419.
Definitely Maybe (Touring) Ltd v Marek Lieberberg Konzertagentur GmbH [2002] CLC 360.
Hanbridge Services Ltd v Aerospace Communications LtdUNK [1993] ILPr 778.
Conflict of laws — Patents — Contract — Applicable law — Place of performance of obligation in question — German defendant threatened claimant's UK customers with patent proceedings — Defendant gave undertaking not to make further such communications to anyone in the UK — Claimant alleged breach of undertaking — Defendant challenged jurisdiction of English court — Whether obligation in question to be performed in Germany or England — Whether law governing obligation in question was English or German law — Patents Act 1977, s. 70 — Civil Jurisdiction and Judgments Act 1982, Sch. 1 (Brussels Convention), art. 5(1) — Contracts (Applicable Law) Act 1990, Sch. 1 (Rome Convention) art. 4(2), (5).
This was the German defendant's appeal from an order of Pumfrey J dismissing his challenge to the jurisdiction of the English court.
The defendant, “B”, was a businessman resident in Germany where he manufactured and supplied machines for the waste disposal industry. He held a European patent (UK) for a rotary waste compactor. Kenburn was an English company which distributed waste compactors. In 1999 B sent a letter to one of Kenburn's customers, Aldi Stores, threatening proceedings for patent infringement. Kenburn's solicitors wrote to B drawing attention to the possibility of an action against him for threats under s. 70 of the Patents Act 1977 and asking for written undertakings in a specific form that the threats would not be repeated to anyone in the UK. B gave such undertakings. In 2000 Kenburn issued a claim form complaining that in breach of the agreement constituted by those undertakings B had made further threats by letter to two companies in the UK. B challenged the court's jurisdiction. The judge held that the obligation in question for the purposes of art. 5(1) of the Brussels Convention was the negative obligation embodied in B's undertaking not to make any communication to any individual or company in the UK. The law governing that obligation was English law under art. 4 of the Rome Convention because despite the fact that B resided in Germany the contract was more closely connected with the UK so that art. 4(5) displaced art. 4(2). He further held that the place of performance was England (whether English or German law was the governing law). Since B's challenge to the jurisdiction was unsuccessful, his acknowledgement of service made for that purpose ceased to have effect by virtue of CPR, r. 11.1(7). The judge stayed the action in order to enable B to decide whether or not to bring a claim for patent infringement by way of counterclaim, failing which the defendant was to serve his acknowledgement of service and defence. B appealed.
Held dismissing the appeal:
1. The judge correctly identified the obligation in question as the negative obligation not to make any communication to anyone in the UK.
2. It was open to the judge to conclude that the contract was strongly connected with the UK and more closely connected with the UK than with Germany on the basis that the objective of the contract was to achieve results (albeit negative results) in the UK, and that the substratum of the contract was Kenburn's assertion of a purely English right of action for threats under s. 70 of the Patents Act 1977. The judge gave clear reasons for holding that art. 4(5) of the Rome Convention displaced art. 4(2) in this case. The judge was also correct to conclude that if art. 4(2) was not displaced by art. 4(5) German law would be the governing law.
3. The judge was right that if English law applied the place of performance of the obligation in question for the purposes of art. 5(1) of the Brussels Convention was the UK since the negative obligation was to achieve a state of affairs in the UK. If German law applied, the place of performance could be deduced from the circumstances to be the UK. (Boss Group Ltd v Boss France SA[1996] CLC 1419distinguished.)
4. The absence of a further acknowledgement of service under CPR, r. 11(7) did not deprive the judge of power to give further directions in the case after he had dismissed the challenge to the jurisdiction.
Aldous LJ:
1. I invite Robert Walker LJ to give the first judgment.
Robert Walker LJ:
2. This is an appeal by Mr Heinz Bergmann from an order of Pumfrey J made in the Chancery Division on 11 May 2001. The judge's order was made on an application by Mr Bergmann, the defendant below, for a declaration that the court had no jurisdiction to hear the action commenced against Mr Bergmann by Kenburn Waste Management Ltd (“Kenburn”), the claimant below and the respondent in this court. By his order the judge dismissed that application. He also refused an application by Kenburn to adduce expert evidence from a German lawyer, Dr Christian Frank, in rebuttal of the expert evidence of another German lawyer, Dr Gerd Coeler, adduced by Mr Bergmann. That matter is raised in a respondent's notice.
3. The appeal raises questions on art. 5 of the Brussels Convention as incorporated into domestic law by the Civil Jurisdiction and Judgments Act 1982 and (as part of the inquiry called for under art. 5 of the Brussels Convention) on art. 4 of the Rome Convention as incorporated by the Contracts (Applicable Law) Act 1990.
4. The facts are reasonably simple and they are fully set out (in a manner which has not been challenged) in the judgment below. It is therefore possible to take them quite briefly.
5. Mr Bergmann is a businessman resident and established in Germany, where he trades on his own account manufacturing and supplying machines for the waste disposal industry. He holds European patent (UK) No. 0,106,268 for a rotary waste compactor (which is referred to in the particulars of claim as a Bergmann Roto-Compactor). Kenburn is based at St Albans and carries on business as a distributor of waste compactors. It is the exclusive distributor of another type of rotary waste compactor (referred to in the particulars of claim as the Kenburn Roto-Compactor). There have been infringement proceedings in Germany between Mr Bergmann and Kenburn, though little is known about these except for a reference (in the compromise letter dated 7 December 1999 to be mentioned...
To continue reading
Request your trial