Lloyd's Maritime and Commercial Law Quarterly
INTERNATIONAL INTELLECTUAL PROPERTY LITIGATION
Fort Dodge v. Akzo Nobel
Recent developments in the English law dealing with the infringement of foreign intellectual property (“IP”) rights have led to the High Court exercising a much expanded jurisdiction in cases of transnational infringement of IP rights. However, they have also led to legal skirmishes being fought out across the North Sea. In Pearce v. Ove Arup Partnership Ltd
1 Lloyd, J., decided that the 1968 Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters2 requires an English court to assume jurisdiction over the infringement of a foreign intellectual property right if the defendant is domiciled in England. In Coin Controls Ltd v. Suzo International (UK) Ltd
3 Laddie, J., concluded that the combined effect of Arts 16(4) and 19 is that, where both validity and infringement of a registrable IP right were in issue, infringement had, together with validity, to be determined in the court of the State in which it was registered. Laddie, J., also stated that, if a plaintiff’s virtually identical IP rights are being infringed both in England and in other Convention States and the parties infringing the plaintiff’s foreign IP rights in those States are not the same entity, he can bring consolidated proceedings against them in England pursuant to Art. 6(1). The Dutch courts, while concurring in Lloyd, J.’s decision in Pearce, think that the decision in Coin Controls was wrong with respect to Arts 16(4) and 19. However, the Dutch courts will stay any infringement action if there is a chance that invalidity proceedings pending in the State in which it was registered will be successful: Expandable Grafts Partnership v. Boston Scientific BV.4 Additionally, it appears that the Dutch courts are prepared to utilize their domestic law and the Brussels Convention, Art. 24 to grant immediate provisional relief in urgent cases (albeit that this relief will generally only have effect within the Netherlands), despite the fact that the validity of a patent is being challenged in another State.
In October 1997 the Court of Appeal delivered its unanimous judgment in Fort Dodge Health Animal Ltd v. Akzo Nobel NV,5 the first case in which the court has been required to consider the issue of an English court’s ability to hear an action for infringement of a foreign IP right. Akzo own a number of patents derived from an application under the European Patent Convention, including virtually identical Dutch and UK patents relating to vaccines derived from a virus. The petitioners (English, Dutch and Australian domiciled companies in the Fort Dodge group), make and sell the same vaccines, said to be derived from a different strain of virus. In April 1997, Akzo began ex parte patent infringement proceedings in the Netherlands against the petitioners and another Dutch company, for its Dutch and UK patents under a Dutch accelerated procedure. Akzo also sought interlocutory relief in the form of an injunction and interim damages.
In September 1997, the petitioners brought an action in the English High Court seeking revocation of Akzo’s UK patent. The petitioners also sought an interlocutory order that
1. [1997] Ch. 293.
2. The Convention was brought into force in the United Kingdom by the Civil Jurisdiction and Judgments Act 1982.
3. [1997] 3 All E.R. 45.
4. (23 April 1998) Unreported (The Hague Court of Appeals).
5. [1998] F.S.R. 222 (Lord Woolf, M.R., Aldous and Chadwick, L.JJ).
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