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concept of ‘commercial aspects of intellectual property’ in Article 207(1) TFEU”. 91 The criterion
was satisfied since the CJEU found that:
“The primary objective of the TRIPS Agreement is to strengthen and harmonise the protection
of intellectual property on a worldwide scale. ... As follows from its preamble, the TRIPS
Agreement has the objective of reducing distortions of international trade by ensuring, in the
territory of each member of the WTO, the effective and adequate protection of intellectual
property rights. Part II of the agreement contributes to attaining that objective by setting out,
for each of the principal categories of intellectual property rights, rules which must be applied
by every member of the WTO”. 92
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As a consequence, the provisions in Part II of the TRIPS Agreement relating to standards
concerning the availability, scope and use of intellectual property rights and specifically Section
5 relating to patents, fall under the Union’s competence and therefore within the jurisdiction
of the CJEU.
Lugano Convention
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Outside the EU there is the Lugano Convention, which is relevant to Norway, Iceland and
Switzerland and to which the EU is also a party. The Lugano Convention is one of the two bases
on which international jurisdiction of the Court is established; the other being the Brussels I
Regulation (recast). 93 This Convention means that judgments of the Court will be recognised
and enforced where appropriate by the courts of Norway, Iceland and Switzerland. Since its
withdrawal from the EU, the UK has applied to join the Lugano Convention, but the European
Commission resists this. 94
Hague Convention
7-63
In addition, the taking of evidence is very important for the conduct of a patent case. Reference
is made inter alia to the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad
in Civil or Commercial Matters, which has been signed by 65 contracting states. 95 However not
all Member States of the EU have to date effectively ratified this Convention. R.202 RoP also
empowers the Court to issue letters rogatory to courts outside the EU; as a result this
Convention may become important in proceedings before the Court. 96
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Furthermore, the service of judicial and extra-judicial documents is important to start an action
before the Court against residents outside the EU. In order to do so, a claimant may use the
procedure set forth in the Hague Convention of 15 November 1965 on the Service Abroad of
Judicial and Extrajudicial Documents in Civil or Commercial Matters. 97 An important detail in
that Convention is that service can only be effected in a contracting state in accordance with the
rules as to service within that state. 98
91
92
93
94
95
96
97
98
(C-414/11) at [52].
(C-414/11) at [58].
art.31 UPCA. See chapter 6 (Jurisdiction, Competence and Forum Shopping).
See Communication from the Commission to the European Parliament and the Council – Assessment on the application
of the United Kingdom of Great Britain and Northern Ireland to accede to the 2007 Lugano Convention (COM (2021) 222
final, 4.5.2021).
As at 19 January 2023 – see https://www.hcch.net/en/instruments/conventions/status-table/?cid=82 [Accessed 7 April 2023].
For further information on letters rogatory, see chapter 17 (Evidence) paragraphs 17-15 to 17-23.
As at 17 February 2023 there were 80 Contracting States – see https://www.hcch.net/en/instruments/conventions/statustable/?cid=17 [Accessed 13 April 2023].
See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraphs 11-85 to 11-101 for more information
on service of claims and pleadings.
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