1.The problems discussed in the thesis can be divided into three groups. Firstly, problems related to the specific characteristics of intellectual property rights, such as the fact that trademarks are national and that it is possible to register trademarks, identical in wording, in different product/service groups. The territorially limited protection makes it possible for different holders to register identical (in wording) trademarks in different countries; in fact the nature of trademark law makes it possible for different legal holders to coexist in the same country.s. 671
2.The coexistence of trademarks is made possible, among other things, by the fact that one can separate similar marks in a “physical” store. Using trademarks in the global Internet alters the situation and (secondly) raises questions regarding Internet-related problems. To begin with the Internet is a borderless environment. If you put information on the web it is, as a principle rule, possible to see that information from each and every connected computer, independent of where in the world that computer might be situated. A consequence of this is that all legal holders of similar trademarks are competing on the same market (in the same cyberspace), with few possibilities to limit the individual use to one single market. The situation gives rise to new, or at least awakening, questions that have not been of immediate importance in the pre-Internet society.s. 671
3.One such question of immediate importance is to what extent the use of a trademark on the Internet, placed there in one country, can constitute infringement in another country. Another question regards the problems that are connected to the question of where the infringing act took place. Another emerging problem that the Internet brings forward is the fact that it might be very difficult to find the potential infringer in the anonymous environment that is the Internet. This is problematic from several different aspects. To begin with the possibility of determining where the defendant is domiciled is a prerequisite for the applicability of a large number of private international 326s. 671
4.Del IV – Sammanfattning och slutsatser law rules. Furthermore, the fact that it might seem that an infringer can escape justice by staying anonymous erodes the morality and tends to trigger the development of an increasing number of cross-border infringements. This development puts (thirdly) the questions and problems regarding jurisdiction in focus. Jurisdictional rules are mainly based upon physical connecting factors like the domicile of the defendant, the establishment or the existence of an injurious action. Such connecting factors are influenced by the above mentioned characteristics of intellectual property rights and the Internet. In this melting pot between territoriality and globalization, material and immaterial, lays the focus of this thesis.s. 672
Part Three - Jurisdiction (chapter 7–11)
Introductory remarks
1.As mentioned above, the questions regarding jurisdiction in cross-border cases must be answered in the light of traditional private international law rules.s. 672
2.From a Swedish point of view, the answers must furthermore be divided into two parts since the answers depend on whether or not the defendant is domiciled in a Brussels or Lugano State (e.g. a country where the Brussels or Lugano Convention or the Brussels I-Regulation are applicable) or in a country outside this area. In a situation where the defendant is domiciled in a Brussels or Lugano State, jurisdiction must be based on the rules set forth in the Brussels or Lugano Conventions or the Brussels I-Regulation (hereinafter referred to as the Regulation and Conventions, respectively).s. 672
3.With regard to disputes where the defendant is domiciled outside the Brussels/Lugano area there is no directly applicable law in support of jurisdiction in cross-border infringement cases. Instead jurisdiction has traditionally been based on carefully-made analogies with the Swedish Code of Judicial Procedure concerning proper national venue (hereinafter referred to as the Procedural Code). As far as analogies are concerned it should be noted that it is, of course, possible for a Swedish court to apply analogously the Regulation/Conventions rules as well as the national procedural code, in a case where the Regulation/Conventions rules do not apply directly. The rules on jurisdiction applicable to intellectual property infringement proceedings in cross-border cases are those that are generally applicable in other civil law proceedings, for example rules of jurisdiction based on the domicile of the defendant and rules based on the place where the harmful event occurred.s. 672
4.Furthermore, the Regulation and the Conventions contain one specific rule regarding registered intellectual property rights. This rule sets forth that proceedings concerned with the registration or validity of patents, trademarks,s. 672
5.327s. 672
6.Del IV – Sammanfattning och slutsatser design or other similar registered rights fall within the exclusive jurisdiction of a court in the State where the right is registered. This puts the question whether or not an infringement dispute can be separated from cases covered by the exclusive jurisdiction in the above-mentioned rule into focus.s. 673
Regulation/Conventions Rules (chapter 8)
1.The general rule is that persons domiciled in a Brussels/Lugano State shall, whatever their nationality, be sued in their State of domicile. From a Swedish court’s point of view this rule is, in a cross-border infringement case, mainly relevant in situations when the defendant, domiciled in Sweden, infringes a foreign trademark. For example, a Swedish company markets a product infringing a trademark registered in Denmark. Pursuant to Article 2, the Swedish company may be sued in Sweden. However, as regards infringements of Swedish rights, Article 2 is of limited relevance as a basis for jurisdiction in cross-border cases. It is of course possible that the defendant is domiciled in Sweden even though the infringing action (depending on how it is to be defined) takes place in another country. However, this must be regarded as an exceptional case. In any case there is another reason to discuss the principal rule in Article 2, in as much as national rights are concerned. The reason for this is that domicile in a Brussels/Lugano State is a prerequisite for the applicability of most of the Regulation/Conventions rules in the first place.s. 673
2.The study concludes that the applicability of Article 2 can be quite problematic when determining the domicile of the defendant, at least in some Internet-related cases. It is, to put it simply, easy to perform cross-border transactions using the Internet and the digital environment makes it possible to act anonymously. However the Internet and the digital framework bring new possibilities to track defendants as well. In this situation it is relevant to discuss different technical means of geographic identification. The study concludes that there are both problems and possibilities in this area of law that will most certainly require courts and practitioners to acquire knowledge about the technical characteristics of the Internet.s. 673
3.When a decision has been taken as to whether the Regulation/Conventions can be applied due to the domicile of the defendant, Article 2 is of course a possible ground for jurisdiction. The purpose of Article 2 is to provide a suitable forum for the defendant, as it is generally more difficult to defend oneself in the courts of a foreign country. Still there are situations when there is a close connection between the dispute and a court other than one in the country of the domicile of the defendant. In such situations it is justified to give the plaintiff additional opportunities as regards jurisdiction.s. 673
4.Consequently there are a limited number of exceptions giving the plaintiff such choices. It is important to note that those exceptions are exceptions and as such they shall be interpreted narrowly. The exceptions that 328s. 673
5.Del IV – Sammanfattning och slutsatser may be used as bases of jurisdiction in proceedings concerning the crossborder infringement of a trademark right are mainly Article 5(3), Article 5(4), Article 5(5) and Article 6(1). It should be noted that there are other rules in the Regulation/Convention which might be applicable to cross-border cases as well. An example of such a rule is a Swedish court’s ability to base its jurisdiction on the fact that the defendant enters an appearance before the court other than to contest the court’s jurisdiction. This variation of prorogation is treated in the thesis as well as the special provisions regarding provisional measures in Article 31 of the Regulation (Article 24 Conventions). Last but not least the rules on exclusive jurisdiction applicable in cases regarding the registration or validity of intellectual property rights are analysed in the thesis as well.s. 674
6.Article 5(3) provides for jurisdiction in the place where the harmful event occurred for matters relating to tort, delict or quasi-delict. Due to this rule, and the way it is interpreted by the European Court of Justice (ECJ), it is possible to find a competent court both at the place where the damage occurred as well as the place of the event giving rise to it. As mentioned above, trademark rights are territorial. In line with this it might be argued that damages could only occur in the country of protection. It is disputed whether this implies that the event giving rise to the damages must take place in that same country. A crucial consideration is how the expression “the place where the harmful event occurred” is to be interpreted, as regards cross-border intellectual property infringements. This question has not been settled by the ECJ even though some guidance can be found in the ECJ-case law.s. 674
7.In conclusion it can be said that Article 5(3) makes cross-border jurisdiction possible both regarding national and foreign trademark rights. Following the interpretation applied by the ECJ regarding the Article it is obvious that jurisdiction can be found both at the place where damage occurred and at the place of the event giving rise to it. However, as regards Article 5(3), the ECJ has stated that the possibility of trying multiple damages is limited to the damages that arose in the country where damage occurred, in cases where this effect is the basis for jurisdiction.s. 674
8.In the discussion about whether or not an infringement case regarding a foreign trademark can be tried by a court in a country different from the protecting country the exclusive rules in the Regulation/Conventions must be remembered. A crucial consideration in an infringement case regarding a foreign right would therefore be whether the validity of that registered intellectual property rights plays a principal role in the dispute. When it comes to adjudicating intellectual property disputes the applicability of Article 5(3) is, at least to some extent, influenced by the interpretation of the exclusive rules on jurisdiction (which will be discussed below).s. 674
9.Furthermore it must be noted that the question about infringements of intellectual property rights in the context of Article 5(3) has not been tried bys. 674
10.329s. 674
11.Del IV – Sammanfattning och slutsatser the ECJ. Due to the global nature of the Internet, and the fact that advertising on the Internet (and other forms of Internet-related dissemination of information) can not be demarcated to one single market easily, obvious problems arise. It could be argued that effect, and consequently effect based jurisdiction, could appear in every connected country. It is recommended not to make such an extensive interpretation of Article 5(3).s. 675
12.The problem might be solved differently. To begin with the ECJ can choose to treat the cross-border infringement cases separately from traditional (national) infringement cases by giving Article 5(3) different interpretations depending on the specific nature of the case. This could of course solve (or at least diminish) the problem, but it would lead to a quite complex situation, which compromises foreseeability.s. 675
13.Another way to attack the problem is to examine the concept of infringement. If an infringement can only be considered to occur in a specific market where the infringing action has commercial effect, the number of potential jurisdictions arising from Article 5(3) would be limited. A recommendation in line with this has been adopted by WIPO in its Joint Recommendation concerning the use of trademarks on the Internet. It might be noted that much of the ideas presented in the WIPO recommendation are similar to the jurisdictional principles used by US courts to assert jurisdiction in Internet related infringement cases. The fact that the idea of commercial effect (or minimum contact due to an active webpage or a deliberate market approach) are discussed and applied is important. The paper concludes that this development makes it credible to suggest that it is time for the ECJ (and for the national Swedish courts) to apply this line of thinking in some Internet related cross-border infringement cases, namely those where jurisdiction is to be based on effects resulting from the posting of information on a webpage with no intention of directing the information to the market where the injurious effects occurred.s. 675
14.If commercial effect is made a requisite for an action to be regarded as infringing a trademark in a specific market it will be possible for courts to decline jurisdiction due to Article 5(3). To give the courts this possibility might be the most favourable solution to the above stated problem. However, the initiative must come from the ECJ. There is probably no room within the framework of the Regulation/Conventions rules for national courts to decline jurisdiction based on Article 5(3) on a discretionary basis. However, there is nothing preventing the national courts from doing so in situations when the Regulation/Conventions rules are not directly applicable.s. 675
15.Finally, it might be discussed in detail what the new wording of Article 5(3) in the regulation (the added phrase “or may occur”) means as far as applicability concerns. The paper concludes that it is beyond doubt that a case concerning an injunction might be tried under the jurisdictional heads of Article 5(3) even in a situation where only the effect is impending. This gives 330s. 675
16.Del IV – Sammanfattning och slutsatser rise to the question of whether this means that a declaratory action would be possible to adjudicate as well. To answer this question a model has been used which divides trademark cases in two groups; one with cases regarding the injurious action, the other with cases concerning the intellectual property right. Cases belonging to the first group are, put simply, possible to adjudicate based on Article 5(3). On the other hand, cases concerning the intellectual property right are to be treated under the rules on exclusive jurisdiction. When analysing the question about declaratory judgement it is argued that a negative declaratory judgement, in most cases concerning trademarks, is to be regarded as a case concerning the intellectual property right and therefore a case that is not to be handled by a court whose jurisdiction is based solely upon Article 5(3). The reason is that a negative declaratory judgement, for instance a case regarding the fact that an action is not to be regarded as injurious, is initiated by the potential infringer and directed to the holder of the trademark. The holder of the intellectual property right can be regarded as the defendant in such a situation which implies that the case concerns the right itself.s. 676
17.Another possible ground for jurisdiction is Article 5(4) of the Regulation/Conventions. If a civil claim for damages is based on an act giving rise to criminal proceedings this Article may provide for Swedish jurisdiction over the civil proceedings, if the Swedish court is seized with the criminal proceeding. When the infringement of an intellectual property right can be regarded as a crime which can give rise to criminal proceedings it is possible that a civil claim for damages can tried or an injunction can be sought in a Swedish court based on Article 5(4).s. 676
18.A question that might be raised regarding Article 5(4) is whether or not a claim for injunction could be regarded as an action within the frames of this Article. Another question is to what extent a claim for injunction based on the infringement of a trademark in one Member State could be regarded as based on the same act as a criminal proceeding in another Member State, regarding the infringement of a corresponding trademark right in that country. The study concludes that an injunction might be regarded as a claim based on the same action that gave raise to the criminal proceedings.s. 676
19.One additional alternative possibility to find a competent court in crossborder cases is given by Article 5(5), which states that a person domiciled in a Member State may be sued in the courts for the place in which the branch, agency or other establishment is situated as regards a dispute arising out of the operations of this specific branch, agency or establishment. There are two prerequisites for this rule to be applicable. It must be a dispute arising from an establishment and it must be an establishment within the meaning of Article 5(5).s. 676
20.As regards the majority of cross-border infringement cases it would only be possible to apply Article 5(5) in situations where the infringing act (and/ors. 676
21.331s. 676
22.Del IV – Sammanfattning och slutsatser the damage) can be shown to have occurred at the place of the establishment. In this situation there would definitely exist jurisdiction based upon Article 5(3) as well. However, as regards Article 5(3), the ECJ has stated (as mentioned above) that the possibility of trying multiple damages is limited to the damages that arose in the country of injurious effect, in cases where this effect is the basis for jurisdiction. Such limitation has not been applied in the interpretation of Article 5(5). In other words there might be a possibility to find jurisdiction in cases of multiple damages due to Article 5(5) which would not be possible due to the current interpretation of Article 5(3).s. 677
23.In regards to Internet-related situations there has been some discussion concerning whether the fact that the infringing action took place on a webpage could mean that Article 5(5) is applicable. The study concludes that a webpage and Internet-related activities can be important factors in reaching a conclusion regarding whether or not jurisdiction is at hand. However, the mere fact that a webpage exists is not enough to assert jurisdiction under Article 5(5). The problem is that it is hard, if not impossible, to find a reasonable way to locate a webpage. The problems are of a similar nature to those regarding the determination of domicile in Internet-related cases.s. 677
24.Article 6(1) in the Regulation/Conventions may, furthermore, provide courts with cross-border jurisdiction. This Article concerns situations with multiple defendants and the possibility of hearing and determining cases together in a court for the place where any of the defendants is domiciled. A prerequisite is that “the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.” The fact that this rule may provide for cross-border jurisdiction is confirmed by Swedish case law (see NJA 2001 s. 386; NJA 1999 s. 660 and RH 2001:81).s. 677
25.As regards intellectual property rights it is unclear however whether or not Article 6(1) could be applied in situations where the claims, directed towards various defendants, are based upon different but parallel intellectual property rights. In this context it could also, similar to the discussion about Article 5(4) above, be questioned if a claim for injunction can be closely connected to a tort claim. Another important question is to what extent it is possible to use Article 6(1) in situations when a question of validity is raised in an infringement case. This question relates, as mentioned above, to the applicability of the rules on exclusive jurisdiction.s. 677
26.As noted above, the Regulation/Conventions rules may permit a Swedish court to exercise jurisdiction over proceedings concerning the infringement of intellectual property rights in cross-border cases. Still it might be argued that the exclusive rule regarding registered intellectual property rights in Article 22(4) in the regulation (Article 16(4) in the conventions) prevent such jurisdiction. The exclusive rules state that questions about registration or validity can only be tried by courts in the country were the disputed right is 332s. 677
27.Del IV – Sammanfattning och slutsatser registered. A crucial question regarding the applicability of the exclusive rules in cross-border cases appears in situations where the registration or validity of a foreign intellectual property right is questioned in connection with an infringement dispute – something that, more or less, can be the case in almost all infringement cases regarding intellectual property rights. As regards trademark cases it can be argued that an infringement claim is so closely intertwined with the question of validity that the infringement proceedings may be said to be “principally concerned” with the right’s validity. In such case, it is unclear whether a court is required to decline jurisdiction. Some aspects regarding this are to be discussed by the ECJ in the forthcoming decision in the GAT-case (C-04/03).s. 678
28.The study concludes, as mentioned above, that the problems might be solved by analysing the character of the case. In cases where the intellectual property right is the “defendant”, for instance the above mentioned negative declaratory judgement, the exclusive rules are to be applied. Still there are cases which will not easily be categorized. Examples of such cases can arise if, for instance, a counterclaim for revocation is invoked or if a separate revocation proceeding is brought before the court.s. 678
29.In those situations it is unclear whether the court should stay the infringement proceedings or if the court should treat the issue of the validity of the foreign intellectual property right as an incidental question or if it is possible for the court to choose either of the proposed solutions.s. 678
30.As regards the first option, this solution would result in a Swedish court staying the infringement proceedings and ordering the defendant to challenge the validity of the right in question before a court in the State where the right is protected.This solution means that the infringement proceeding can still be tried by the Swedish court. Unfortunately this option delays the proceeding. Furthermore there is a risk that the defendant will use this option in bad faith, contesting the rights validity with the sole purpose of delaying the proceeding.s. 678
31.The second option would be to exercise jurisdiction over the infringement dispute treating the issue of the validity of the foreign intellectual property right as an incidental question. In such a case any finding made by a court concerning a foreign intellectual property right’s validity would only have effect in the actual proceedings. It would not be binding in any future proceeding where the same issue arises. The study concludes that both options are eligible in situations when the question of validity is raised only as a defence.s. 678
National Rules (chapter 9)
1.As noted above, the rules in the Regulation/Conventions are only applicable in situations where the defendant is domiciled in a Brussels/Lugano State. In other cases jurisdiction must be based on analogies. As stated above thes. 678
2.333s. 678
3.Del IV – Sammanfattning och slutsatser national rules on proper venue in the Procedural Code have traditionally been applied analogously. Still it is possible to make those analogies from the Regulation/Conventions as well. However, in most cases the result would be the same, since the rules in the Procedural Code that might be applicable in a cross-border infringement case are similar to those of the Regulation/Conventions. There is one important exception though, the rule on debt obligation in the first sentence of chapter 10 section 3.s. 679
4.The rule on debt obligation states that a plaintiff may bring an action concerning debt obligations at the place where property belonging to the defendant is located. According to this rule it is possible to find a competent court in Sweden in cross-border cases even though neither the defendant nor the plaintiff is domiciled in Sweden and neither the infringing act nor the direct damage occurred in Sweden. It is enough that property belonging to the defendant is located in Sweden.s. 679
5.Even though this rule on jurisdiction is not recognised within the framework of the Regulation/Conventions, another Brussels/Lugano State is obligated to enforce a Swedish judgment based on this exorbitant rule, provided the judgment itself is within the scope of the Regulation/Conventions.s. 679
6.As regards Internet-related aspects, the question regarding whether or not a domain name is property in the meaning of the above stated section of the Procedural Code is analysed in the thesis. The prerequisites for an asset to be regarded as property are, put simply, that the asset in question must have a monetary value. It does not necessarily mean that the potential value must cover the entire amount demanded by the plaintiff, but a majority of legal scholars agree that the value must cover, at least to some extent, the possible legal costs. The value should furthermore be realizable in a way within reach of the court from a Swedish enforcement perspective.s. 679
7.As regards the first prerequisite it is not far-reaching to consider a domain name as property, as domain names unquestionably can have a value. It is possible to trade domain names as shown by the fact that there exists a market for domain name trading. Still, the value of the domain name must, reasonably, be higher than the simple cost for the registration. This can of course be the case with regard to domain names like business.com but would not be the case regarding most of the private and institutional domain names. Besides the question of domain name value there is one further prerequisite to fulfil before it is possible to assert jurisdiction under the rule on debt obligation. It must be shown that it is possible to realize the potential value of a domain name, which means that it must be possible to locate the property in question. Localization is, as already discussed, a common problem to most Internet activities. Nevertheless, the study proceeds on the basis that a domain name can qualify as property for the application of the above mentioned rule in the Procedural Code in situations when it is possible to locate the domain 334s. 679
8.Del IV – Sammanfattning och slutsatser name to Sweden. Localization means in these circumstances that the property can be seized by the Swedish enforcement service in accordance by a Swedish court order.s. 680
9.Even if the discussion whether or not domain names can be covered by the wording of Section 3 are left aside, it is of course possible, according to this rule, to assert jurisdiction if the defendant has other kind of property in Sweden, for instance a Swedish trademark. As already mentioned, the rule is, with few exceptions, generous to the plaintiff.s. 680
Miscellaneous (chapter10–11)
1.In chapter 10 the questions about jurisdiction regarding unregistered trademarks are discussed. The concept of an unregistered trademark right, similar to the registered right, is, more or less, a unique Scandinavian phenomenon. However, the problems are not that unique. With the exception of the exclusive rules, the applicability of the Regulation/Conventions rules are not effected by the fact that the disputed trademark is unregistered. However it shall be noted that problems can arise regarding the question of determining the territoriality of unregistered trademarks. Those problems are likely to appear in discussions about other unregistered intellectual property rights as wells. 680
2.Furthermore, jurisdiction as regards Community Trademarks is dealt with in the thesis (chapter 11). The starting point for the discussion about jurisdiction in situations regarding trademarks is the Community Trademark Regulation (Regulation 40/94). In several situations the Regulation/Conventions rules are still important though. In this respect the study concludes that there are no immediate problems specifically related to the special rules in the Community Trademark Regulation. Still similar problems, as discussed above, might appear when it comes to applying the Community Trademark Regulation as well.s. 680
3.335s. 680