A guide to the UPC and the UP - Flipbook - Page 99
Conflicts between art.33 UPCA and the Brussels I Regulation (recast)
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It has been pointed out that not all the rules relating to the competence of the divisions
are compatible with the fundamental principles of the Brussels I Regulation (recast). 77
The rules on which division of the Court is competent to hear the case, particularly those
in art.33(1) UPCA, are said to undermine the certainty and predictability for the defendant
required by the Brussels I Regulation (recast). For example, if a defendant is domiciled
outside the territories of the Contracting Member States, the claimant has a choice of
bringing the action either before the division in the Contracting Member State where the act
of infringement took place (which is compatible with the Brussels I Regulation (recast)) or
before the central division (which is not). Another view, 78 this time in a discussion on the rule
on joining co-defendants, is that the additional requirements found in art.33(1)(b) UPCA are
only applicable to defendants located within the territory of the Court and art.8(1) Brussels
I Regulation (recast) applies to co-defendants located outside that territory. Thus, in relation
to the latter, there is no requirement for there to be a commercial relationship between the
defendants. This is because the international jurisdiction of the Court is determined by the
Brussels I Regulation (recast) and the Lugano Convention, but for defendants in the territory
of the Court the local rules in the UPCA apply.
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Winfried Tilmann has suggested that the only way to resolve the matter is for the Court
to refer to the CJEU questions on (1) whether the distribution of competence to the
divisions in the Court’s international sphere has to respect the fundamental principles
of the Brussels I Regulation (recast); (2) whether the deviations are compatible with the
Brussels I Regulation (recast). 79
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However, the Commission in its non-paper on the relationship of the draft UPCA with the
Brussels I Regulation (recast), 80 states that the rules of the latter do not apply to the internal
allocation of competences between the various divisions of the Court; they are regulated by
the UPCA itself. 81 Further, the CJEU has held 82 that the rules on jurisdiction in the Benelux
Convention on Intellectual Property (Trade Marks and Designs) were consistent with the
principles set out in Brussels I Regulation (EC) No 44/2001 (before its amendment by Regulation
(EU) No 542/2014) despite the fact that they are “generally based on the defendant’s domicile
and supplemented by other forms having a close link with the subject matter of the dispute”.
Indeed, the regime is not dissimilar to that found in art.33(1) UPCA and includes a provision
where, if the defendant is not domiciled in the Benelux territory, the claimant may bring the
action “before the court of his choice, either in Brussels, the Hague or Luxembourg”.
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79
80
81
82
Kant MCA “The Unified Patent Court and the Brussels I bis Regulation”, Netherlands International Privaterecht, 2016 AFl.4
pp.706 to 715.
Hoyng W “Cross-border decisions and the UPC” IE-Procesrecht. Constant in beweging [IP Procedural Law. Constantly in
Motion] 2022, pp.90 to 99 at p.96.
Tilmann W “The UPC Agreement and Unitary Patent Regulation – construction and application” JIPLP, 2016, Vol. 11, No. 7,
p.545 at p.553.
“Relationship of the draft agreement on the Unified Patent Court with Regulation (EC) No 44/2001 Brussels I – Non-paper
from the Commission services (30 November 2011)” annexed to 17407/11 PI 166 COUR 74
https://data.consilium.europa.eu/doc/document/ST-17407-2011-INIT/en/pdf [Accessed 1 April 2023].
This is requested in recital 5 Regulation (EU) No. 542/2014.
Brite Strike Technologies Inc. v Brite Strike Technologies SA (C-230/15) ECLI:EU:C:2016:560 at [65].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 89
