A guide to the UPC and the UP - Flipbook - Page 90
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By way of example, if a defendant company domiciled in France (a Contracting Member State)
and a defendant company domiciled in Spain (a non-Contracting EU Member State) each
infringe the same European patent by selling the same product into the United Kingdom
(an EPC Contracting State which is not in the EU) and Norway (a Lugano Convention State) 29
it is arguable that there would be a sufficiently close link connecting the subject-matter of
the measures sought and the territorial jurisdiction of the Court 30 such that it would be
expedient to determine the matters together. As this example relates to an action for
a preliminary injunction, art.24(4) Brussels I Regulation (recast) does not preclude the
granting of relief.
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Finally, it should be noted that EU Member States which are not Contracting
Member States have to recognise and enforce the Court’s judgments against
the defendants domiciled in their jurisdiction. 31
Jurisdiction over Defendants Domiciled in Lugano Convention States
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In relation to defendants domiciled in Switzerland, Norway and Iceland, the Lugano Convention
is to be applied by the Court. 32 The Lugano Convention is very similar in wording to the Brussels
I Regulation (EC) No 44/2001, the predecessor to the Brussels I Regulation (recast), but has not
been amended by any instrument similar to Regulation (EU) No. 542/2014.
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Thus, in relation to defendants domiciled in Lugano Convention States, the Court will have
jurisdiction over infringement of a Unitary patent or a European patent granted in a number
of Contracting Member States under art.5(3) Lugano Convention and may join such defendants
into an action based on the domicile of a co-defendant in a Contracting Member State under
art.6(1) Lugano Convention. Provisions similar in wording to art.35 Brussels I Regulation (recast)
are contained in art.31 Lugano Convention providing that the Court can grant provisional,
including protective, measures even if the courts in Switzerland, Norway or Iceland have
jurisdiction as to the substance of the matter. Article 22(4) Lugano Convention is very similar to
art.24(4) Brussels I Regulation (recast) and provides that, in matters relating to the validity of a
national patent, the national court has exclusive jurisdiction. Consequently, jurisdiction issues
will be similar to those discussed in relation to defendants domiciled in EU Member States
which are not Contracting Member States.
29
30
31
32
The Lugano Convention does not prejudice the application by EU Member States of any amendments to the Brussels
I Regulation (recast) (art.64 Lugano Convention). Therefore, although art.71b(2) Brussels I Regulation (recast) does not apply
to defendants domiciled in Iceland, Norway and Switzerland, it nevertheless applies to defendants domiciled in third
countries infringing a European patent granted in those countries.
Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line (C-391/95) [1998] ECR I-07091.
art.71d Brussels I Regulation (recast).
art.31 UPCA.
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A Guide to the UPC and the UP 80
