Which court is competent to decide IP infringement cases?
For disputes arising within the boundaries of a country, it is national law that will determine which court is competent to decide an IP dispute. A number of countries have established specialized tribunals for IP matters, which will adjudicate IP cases according to special rules of procedure.
In cases of cross-border litigation, the situation is more complicated.
Generally, matters of jurisdiction, as well as questions of applicable law, and recognition and enforcement of foreign judgements, are subject to a country's national rules of private international law. Despite the commonly used expression "private international law", these areas of law are not agreed upon in international treaties or conventions, but are national laws which determine how to handle civil law cases which involve an international element (e.g., where a party is resident abroad).
Consequently, where issues of private international law are not harmonized, a whole set of national private international laws systems coexist. Since harmonization in this respect is still relatively limited, cross-border litigation often requires a complex analysis of questions of jurisdiction. These complications are becoming more and more relevant, as cross-border spillover has intensified over the last decade due to the growing importance of international trade, the expanding use of new communication tools, the growth of Internet businesses, intensified travelling, and increased migration around the globe.
Nevertheless, several general principles exist :
A number of jurisdiction laws set forth the complementary concepts of "general jurisdiction" and "special jurisdiction": General jurisdiction is based primarily on the " actor sequitur forum rei" principle, the idea behind which is that the plaintiff must bring suit against the defendant in the State of his domicile, habitual residence, or principal place of business. Special jurisdiction rules focus more on the issue at stake, and refer jurisdiction in IP matters for example to the place where a registration or deposit has been issued, or, in cases of IP infringements considered as tort, where the harmful event took place or the damage occurred. Finding location of the harmful event can cause considerable problems when infringements occur on the Internet, since the global accessibility of the Internet makes the discernment of the physical location where the damages or infringing acts occurred difficult.
In common law systems, courts tend to establish jurisdiction by requiring having either personal jurisdiction over the defendant or subject matter jurisdiction over the controversy at hand. The latter has sometimes been denied by courts in disputes concerning IP rights because of the territorial nature of these rights. Additionally, common law countries adhere to the forum non conveniens doctrine. This doctrine allows courts to decline jurisdiction and refer the case to a court abroad if there is no genuine connection to a legal venue in the country, or the foreign court is considered to be more adequate to deal with the dispute.
An overview on matters relating to jurisdiction and applicable law in intellectual property disputes, with a particular focus on disputes arising on the Internet, is available in the WIPO Publication "Intellectual Property on the Internet: A Survey of Issues", Part IV.
