INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| FUTURE NEW DEVELOPMENTS LIMITED
|- and -
|B & S PATENTE UND MARKEN GmbH
Ulick Staunton (instructed by Lupton Fawcett Denison Till) for the Defendant
Hearing dates: 2nd June 2014
Crown Copyright ©
Judge Hacon :
Grounds for the jurisdiction of the court
(1) The English courts are the forum conveniens;
(2) art.5(3) of the Brussels I Regulation applies;
(3) art.23(1)(b) applies;
(4) art.24 applies.
"A person domiciled in a Member State may, in another Member State, be sued:
(3) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur."
"If the parties, one or more of who is domiciled in a Member State, have agreed that a court or the courts of a Member State are to have jurisdiction to settle any disputes which have arisen or may arise in connection with a particular legal relationship, that court or those courts shall have jurisdiction. Such jurisdiction shall be exclusive unless the parties have agreed otherwise. Such an agreement conferring jurisdiction shall be either:
(a) in writing or evidenced in writing; or
(b) in a form which accords with practices which the parties have established between themselves; … "
"The wording which now appears as Article 23(1)(b) was introduced into the Brussels Convention on the accession of Spain and Portugal, to loosen the grip of the formality requirement of writing or evidence in writing [required by art.23(1)(a)]. It goes beyond the liberalisation of the requirement of writing, in that it allows for an agreement on jurisdiction to be validated even where there is an absence of writing recording the assent of the party to be bound, so long as there is evidence of a practice having been established between the parties. The reference to practices which the parties have established between themselves has in mind, no doubt, a situation in which the history of past dealings would suggest that it would be bad faith on the part of a party who sought to rely on the lack of writing to challenge the formal validity of the agreement, or to argue that there was no notice of the proposed agreement on jurisdiction."
Litigation, including that in the IPO, is not centred on any agreement between the litigating parties – rather the opposite. Of course it is possible that parties may agree about particular matters during the course of litigation, such as an agreement that for the purposes of the dispute an identified assertion will be taken to be unchallenged, but nothing of that sort happened between these parties in the IPO. I will hypothesise for this purpose that in the IPO B&S had expressly and unequivocally abandoned any challenge to the jurisdiction of English courts. That would have been a concession by B&S in the course of the proceedings, not an agreement between the parties by way of a course of conduct or, more exactly, an agreement in a form which accorded with practices which the parties had established between themselves.
"Apart from jurisdiction derived from other provisions of this Regulation, a court of a Member State before which a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered to contest jurisdiction, or where another court has exclusive jurisdiction by virtue of Article 22."
(1) It was impossible to enter an appearance in the IPO according to the rules of the IPO because those rules have no equivalent to CPR Part 11 for disputing the court's jurisdiction. If the jurisdiction could not be disputed, neither could a litigant submit to it as a matter of English law.
(2) It was not possible to enter an appearance in the IPO within the meaning of art.24 of the Brussels I Regulation.
(3) The IPO proceedings were in any event now terminated. The only relevant question was whether B&S had entered an appearance before the IPEC. It was common ground that it had not if the IPEC is considered in isolation. It was wrong in law to treat the IPEC proceedings as being a seamless continuation of the IPO proceedings, as FND alleged.
Whether a party can dispute the jurisdiction of the IPO
Whether a party can enter an appearance before the IPO
Whether a party who reserves his position on jurisdiction can enter an appearance
" The test to be applied in determining whether any particular conduct amounts to a submission to the jurisdiction was considered by Colman J. in Spargos Mining NL v Atlantic Capital Corporation  reported only in "The Times" for 11th December, but quoted in full by Patten J. in SMAY Investments Ltd. v Sachdev  1WLR 1973 at p.1976. I reproduce the whole of the quote as set out in that paragraph 41 from the Judgment of Patten J:
"In approaching the question of submission, I have in mind the following authorities. In Astro Exito Navagacion S.A. v. W.T. Hsu, otherwise known, more pronounceably, as The 'Messiniaki Tolmi',  1 Lloyds Reports, 266 , Lord Justice Goff (as he then was) at page 270, said this:
'Now a person voluntarily submits to the jurisdiction of the Court if he voluntarily recognizes, or has voluntarily recognized, that the Court has jurisdiction to hear and determine the claim which is the subject matter of the relevant proceedings. In particular, he makes a voluntary submission to the jurisdiction if he takes a step in the proceedings which in all the circumstances amounts to a recognition of the Court's jurisdiction in respect of the claim which is the subject matter of those proceedings. The effect of a party's submission to the jurisdiction is that he is precluded thereafter from objecting to the Court exercising its jurisdiction in respect of such claim. Whether any particular matter, for example an application to the Court, amounts to a voluntary submission to the jurisdiction must depend upon the circumstances of the particular case.'
In Sage v. Double A Hydraulics Ltd,  Times Law Reports, 165 , Lord Justice Farquharson said (and this is a report of the judgment which is not reported in oratio recta):
'A useful test was whether a disinterested bystander with knowledge of the case would have regarded the acts of the Defendant, or his solicitors, as inconsistent with the making and maintaining of his challenge.'
In arriving at the view to be imputed to the disinterested bystander, it seems to me that one has to bear in mind that there will be an effective waiver, or a submission to the jurisdiction, only where the step relied upon as a waiver, or a submission to the jurisdiction, cannot be explained, except on the assumption that the party in question accepts that the court should be given jurisdiction. If the step relied upon, although consistent with the acceptance of jurisdiction, is a step which can be explained also because it was necessary or useful for some purpose other than acceptance of the jurisdiction, there will, on the authorities, be no submission.
If the well-informed bystander had been left in doubt because what the defendants had done was equivocal, in the sense that it was explicable on other grounds in addition to agreement to accept the jurisdiction of the court, then the conclusion must be, on the authorities, that there would have been no submission to the jurisdiction. The representation derived from the conduct of the party said to have submitted must be capable of only one meaning."
 Thus the test to be applied is an objective one and what must be determined is whether the only possible explanation for the conduct relied on is an intention on the part of the defendant to have the case tried in England."
" It is common ground that in determining whether there has been an appearance pursuant to art.24 of the Brussels Regulation it is appropriate to consider whether there has been a submission to the jurisdiction in accordance with the local law, in this case, English law."
Teare J went on to refer to the judgment of the Chancellor in Global Multimedia. (The ruling of the Court of Appeal on appeal from Teare J's order was not concerned with art.24, in relation to which permission to appeal was refused).
"Further, the companies referred to and some of the relevant documents are the subject of several different applicable laws and the courts of other jurisdictions may be the correct forum to decide some or all of the issues raised in this application. B & S reserves all its rights in respect thereof in particular until legal advice has been sought as to such several applicable laws and jurisdiction."
" In its written submissions, the defendant argues that this case is not about any aspect of patent law, but will involve detailed consideration of a number of non-patent law points, notably the effect of the share mortgage and the validity of the assignment, and also potentially questions of fraud. It also argues that this may involve issues of foreign law, as the claimant is incorporated in the Cayman Islands and the share mortgage is expressed to be governed by the laws of Hong Kong. It further argues that cross-examination of Mr Steiert and others is likely to be necessary."
" The defendant also states that it reserves its rights to assert that the tribunals and/or courts of England and Wales lack jurisdiction, and/or are not the appropriate forum for determining this matter."
Whether entering an appearance before the IPO gives the IPEC jurisdiction
Abandonment of Article 24 by FND