Intellectual property (IP) infringements are frequently connected to more than one State, either because the infringer or the right holder is located abroad or because the infringement has been committed in a different State. In these situations, to file a complaint, it is essential to determine which courts have jurisdiction over the case.

In the EU, this question is answered in Regulation 44/2001 (Brussels I Regulation)1.

According to Regulation 44/2001, the rules for determining which courts have jurisdiction over IP infringements differ depending on whether the defendant is domiciled in a Member State or not. A special rule also exists for the adoption of interim measures.

The basic rule is that the plaintiff can choose to file the complaint in the court of the Member State where the defendant is domiciled or in the courts of the place where the harmful event occurred or may occur. In cases of IP rights infringement, the place where the harmful event occurred means the place where the infringement took place.

Ex: A French company that has distributed products in Spain using a trade mark without permission can be sued in the courts of France (defendant’s domicile) or in the courts of Spain (place where the harmful event occurred). Furthermore, if the French company has not started the distribution but there is a danger that they will do so, the complaint can be filed in Spain insofar as it is the “place where the harmful event may occur”.

There are cases where the harmful event occurs in different Member States.

Ex: A person distributes patented products in several Member States without permission from the patent holder.

In such a case, the plaintiff can file the complaint in the court of the defendant’s domicile or in the courts of any of the Member States where the infringement was committed.

However, according to the European Court of Justice (ECJ)2, the court of the country where the defendant is domiciled is the only one that can hear a complaint for an infringement committed in all the Member States; while the courts where the harmful event occurred can only hear complaints related to the infringement committed in the territory of that Member State.

This case law is particularly relevant in cases of infringement of IP rights committed on the Internet.

Ex: A Belgian service provider distributes music files to several Member States without the permission of the right holders. In this case, the courts of Belgium may hear a claim for compensation for damages for the global harm while the courts of the other Member States can hear complaints for infringements verified in their territories.

In any case, it must be taken into account that accessibility of a website from a Member State is not enough to grant jurisdiction to the courts of that State. A harmful event must occur, which means that it must be shown that the provider was directing its activities toward that Member State. If activity is not directed toward a Member State there is no IP right infringement in that Member State.

There are cases where various persons domiciled in different Member States participate in an IP infringement. In these situations, the plaintiff can sue all the defendants before the court of the domicile of any of them. However, according to the Regulation and the ECJ case law, this is only possible when all the complaints are closely connected. Generally, this is the case when all the defendants participate in one and the same infringement. The rule is not applicable when several defendants infringe an IP right in different Member States3.

Ex: If a person domiciled in the U.K. and another person domiciled in France distribute a patented product in Italy without the permission of the right holder, a joint complaint can be submitted before the courts of the U.K. or France. Otherwise, if the first person distributes the product in the U.K. and the second in Italy, a joint complaint cannot be filed.

When the defendant is domiciled in a third State, national courts must determine their jurisdiction according to their national legislation.

Ex: If a complaint is submitted in the courts of Germany against a person that is domiciled in the United States, German courts will apply their national legislation to determine whether they have jurisdiction to hear the case or not.

Interim measures play a very important role in proceedings for infringement of IP rights. Before a final judgment is reached, the right holder may ask for a provisional prohibition of the supposedly infringing activities. According to Regulation 44/2001, there are two options for soliciting the adoption of these measures:

First, they can be solicited in the courts where the claim has been filed or is going to be filed.

Second, they can be solicited in the courts of any other Member States where the provisional measures have to be executed.