Enforcement of Foreign Intellectual Property Rights in England

Introduction

When it comes to the enforcement of foreign intellectual property rights in England, it is important to bear in mind that IP rights are principally territorial rights – these rights are granted on a country by country basis. International treaties facilitate recognition of most intellectual rights, by requiring signatory states to implement domestic law to either recognise intellectual property rights in force in other countries without any formality or by implementing procedures that permit formal registration and recognition of such rights with streamlined procedures.

Obtaining Intellectual Property Rights

The registered forms intellectual property rights (patents, registered trade marks and registered designs) may be granted within the country or principality that they are applied for.

The extent of protection of these territorial rights may be extended to other countries and territories by taking advantage of international conventions that have become signatories to relevant conventions. In the case of registered intellectual property rights, a formal application must be prepared and lodged with the relevant office in accordance with prescribed rules for the particular intellectual property rights in question.

For instance, at its genesis patent rights were created to provide an incentive to local industry to innovate. The grant of the patent monopoly was designed to protect the investment associated that innovation only in the local market. International conventions have been in place for many years that allow these domestic rights to be extended to other countries – with a single application. Similarly, registered trade marks may be applied for over 70 countries with a single application.

Copyright is an unregistered form of intellectual property right in the UK. Copyright works created in the UK do not require registration in foreign states due to the application of the Berne Convention. The Berne Convention grants national treatment to foreign nationals. That is to say, a foreign national may approach the courts of England and assert their copyright, which subsists as a result of their own foreign law, and seek to assert rights associated with their copyright in the UK. The rights asserted would be those granted under the Copyright Designs and Patents Act, as if they were a British national.

In contrast to patent rights and registered trade mark rights, in England, there is no registration process required by an author to assert copyright. Implementation of the provisions of the Berne Convention into the local law of England allows a copyright owner to assert infringement of their copyright in England in the same way as any other British national

Defendants in Europe

Where the relevant registered intellectual property rights were granted in a state which is a member of the European Union, it is the state where those rights were granted that dictate the Courts that must hear disputes in respect to the validity of those registered intellectual property rights. Indeed, that member state has exclusive jurisdiction to hear such disputes. . This stands in contrast to infringement to foreign registered intellectual property rights –registered rights must be granted in England in order to enforce intellectual property rights for infringements taking place in England. For instance, a business owing registered trade mark rights in Germany does not grant any registered trade mark rights in England unless that same business is the owner of a UK registered trade mark or a Community Trade Mark (which grants registered trade mark protection across all the countries and territorial who are members of the European Union).

In respect to English unregistered intellectual property rights such as passing off and copyright, the intended defendant must be sued in their state in which they are domiciled unless there is an adequate jurisdictional basis to commence proceedings in England. This threshold may well be met where copyright infringement (based on foreign rights) takes place in England, as an application of the implementation of the provisions of the Berne Convention in the UK. For instance, in respect to copyright infringement, Article 5(2) of the Berne Convention grants national rights in England to foreign intellectual property owners. These provisions find force of law in England by their implementation in the Copyright, Designs and Patents Act 1988. It may well be the case that a foreign litigant in England would be granted superior rights to those granted under its own, foreign,) national copyright system.

Where a defendant is one of a number of defendants in an action, they may be sued in any one of the states in which the defendants are domiciled.

Defendants outside Europe

In cases where relevant intellectual property rights are not registered in England and the defendants not domiciled in a member state of the European Union, it is likely that a court would find that a claim for infringement of foreign intellectual property rights in an overseas jurisdiction is not justicable in English courts. This is because the foreign court is more than likely to be the more appropriate jurisdiction, and English court forum non conveniens.

Enforcement of Foreign Judgments

It is possible that a relevant intellectual property right may be infringed in a foreign jurisdiction, but not in England. When these cases arise, the defendant may not hold substantial assets that may be recovered against in the foreign jurisdiction or the defendant may not even be present within the foreign jurisdiction. When such a defendant is domiciled in England and has substantial assets in the jurisdiction of English Courts, depending upon the particular foreign jurisdiction a claimant may not be left without recourse.

It is possible to commence proceedings in the foreign jurisdiction to obtain a judgment for infringement of the intellectual property rights, with a view to enforcing that judgment in England. This approach sidesteps the complexities of establishing jurisdiction in English Courts, with respect to the original infringement and persuading the Court that the disputes is forum conveniens of English courts. This approach however may be handicapped by the approach that English Courts take to the particular foreign Court’s judgment. For instance, an English will not enforce a foreign judgment that imposes punitive damages such as those awarded in the United States.

Conclusion

Foreign intellectual property rights are seen by English courts to be within the jurisdiction the courts within jurisdiction that were granted. The proper forum - the forum conveniens - for infringements of registered intellectual property rights is seen to be the country in which they were granted. Of course, conventions exist to extend protection to jurisdictions beyond the original place of acquisition of registered rights. Those initial rights may be able to be extended to England.

If however incidents of infringement have taken place in England, a separate cause of action will probably exist in England that does not rely upon a factual matrix which takes place overseas.