Actions for Infringement of a Foreign Intellectual Property Right in an English Court

Abstract

Recent English decisions have paved the way for English courts to apply foreign intellectual property law to the infringement of foreign intellectual property (‘IP’) rights in cases in which the court is seised of jurisdiction pursuant to the 1968 Brussels and 1989 Lugano Conventions. If one defendant can be sued pursuant to the Conventions' rules, the potential exists to consolidate in one English action claims against different defendants for the infringement of intellectual property rights from different jurisdictions. This ability to consolidate infringement actions is subject to Article 16(4) of the Conventions, the requirements of Article 6(1) and RSC Order 11, rule 1(1)(c), and the doctrine of forum non conveniens. However, it appears that in cases in which the court is seised of jurisdiction pursuant to the non-Convention rules, English courts will not be entitled to apply foreign intellectual property laws.