Future New Developments Ltd v B & S Patente Und Marken GmbH
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
- HIS HONOUR JUDGE HACON
Areas of Law
- Civil Procedure
- Intellectual Property Law
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
AI Generated Summary
The Defendant, a German company, was registered as the proprietor of a European Patent owned by the Claimant, a Cayman Islands company, who claimed the assignment was unauthorized. The UK Intellectual Property Office declined to deal with the matter, directing it to court. The Defendant challenged the English court's jurisdiction based on the Brussels I Regulation. The court found that jurisdiction was properly established under Article 24 of the Regulation, as the Defendant had entered an appearance before the IPO, considered a UK court for these purposes.
Judgment
Judge Hacon :
Background
The Defendant (“B&S”) is a company domiciled in Germany. It is the registered proprietor of European Patent (GB) 1 095 541 (“the Patent”) which relates to energy saving technology for use with fluorescent tubes. The application for the Patent was filed on 30 September 1999 by Inotec GmbH (“Inotec”). On 27 October 2001 Inotec assigned the application to the Claimant (“FND”), a company domiciled in the Cayman Islands. The Patent was granted by the European Patent Office on 17 July 2002.
On the face of a written declaration of assignment dated 23 March 2009 the Patent was assigned from FND to B&S. The declaration is signed by Alois Steiert who, at least until 21 February 2009, was a director of FND. The assignment was registered by the UK Intellectual Property Office (“IPO”) so that B&S is recorded as the registered proprietor of the Patent.
FND claims that on 23 March 2009 Mr Steiert had no authority to assign the Patent and that the purported assignment is of no legal effect. On 17 September 2012 FND filed a reference in the IPO under section 37 of the Patents Act 1977 (“ the Act ”) claiming entitlement to the Patent.
There was a hearing on 23 October 2013. In a Decision dated 23 December 2013 the Hearing Officer, Julyan Elbro, directed that the claim would be more properly dealt with by the court and therefore declined to deal with the reference, pursuant to section 37(8) of the Act .
On 7 January 2014 FND issued a claim form in this court (“the IPEC”) claiming entitlement to the Patent. An acknowledgment of service dated 20 February 2014 was filed by B&S in which B&S indicated its intent to challenge the jurisdiction of the court. By an application notice dated 4 March 2014 B&S sought a declaration that the court has no jurisdiction to hear the dispute and an order setting aside the claim form. That application is now before me.
Grounds for the jurisdiction of the court
The jurisdiction of the court is governed by Council Regulation (EC) 44/2001 (“the Brussels I Regulation”). B&S’s initial skeleton argument in support of this application challenged jurisdiction on straightforward grounds. Art.22(4) does not apply to a dispute about the ownership of registered intellectual property rights, see Case 288/82 Djuinstee v Goderbauer [1983] ECR 3663 . Therefore art.2 of the Regulation applies. B&S is domiciled in Germany, accordingly the present dispute must be brought there.
FND’s skeleton argument disputed none of