RICERCA ITALIANA     

Research program

Judicial cooperation in civil and criminal matters within the European Union. Experiences, results and perspectives.

University Co-ordinator

Università Cattolica del Sacro Cuore - Studi internazionali - MILANO(MI)

Research Unit Leader

Luca RADICATI DI BROZOLO

Description

This Research Units inteds to investigate some of the most significant profiles of the interaction between the discipline of IP rights and the EC framework on judicial cooperation. The research will focus on whether the policies to be served in this field are such as to merit a different regime than Brussels and its progeny concerning jurisdiction and enforcement. This is often suggested by advocates of a separate international instrument on jurisdiction and enforcement in intellectual property matters – some of which claim that their field requires less emphasis on faciliting the enforcement of judgments, less reliance on the general-jurisdiction grounds like that of Article 2 of the Brussels I Regulation. In this regard, it may be useful to remind that needs of specialisation of jurisdictional criteria have been raised in respect of antitrust claims, whch have been removed from the Drft Hague Convention on Jurisdiction and Enforcement of Judgments. Given that the issues on the taking of jurisdiction over IP/IT disputes extend to the external relations of the Union, the question arises as to which is the most suitable international institution to deal with the private international law issues involved in the protection of intellectual property. If it is the Hague Conference, the international instrument to be produced is more likely to be compatible with the instruments of the European Judicial Area, and the Community institutions responsible for the European Judicial Area will be able to participate meaningfully. Alternatively, should the WIPO or the WTO be charged with such an enterprise, it will be different experts and different services which will be involved – leading to a stronger need for coordination with the European Judicial Area instruments.
Having highlighted the issues of more general interest, we may now turn to some specific questions arising out of the interaction between IP and EC Reg. 44/2001.
A first issue concerns the reach of Article 22(4), providing exclusive jurisdiction in proceedings concerned with registration or validity. In this respect a preliminary inquiry regards the types of IP that are covered. The provision speaks of “patents, trade marks, designs, or other similar rights required to be deposited or registered” – it is legitimate to question whether it includes internet domain names, or geographical marks (for example, for wine and cheese), and what kind of disputes about these rights are covered.
Attention should also be drawn to the reach of art. 2 in these matters, as well as the scope of application of art. 5(3) over counterfeiting actions and negative declarations; this is particularly important after the extension of this provision to final injunctions in the light of new art. 5(3) and of the ECJ judgments rendered in the cases Henkel and DFDS. The limits of application of the provision on joint defendants in these kinds of disputes and of lis alibi pendens should also be explored.
All such aspects should be duly coordinated with the EC legislation on intellectual property.
As mentioned before in part 2.3, a further part of the research may deal with the impact of judicial cooperation in criminal matters on the protection of IP rights, with specific attention to blocking and forfeiting orders.