This is to inform you about the most important recent developments concerning the judgments project of the Hague Conference on Private International Law. From 6 to 22 June last, the Hague Conference held a Diplomatic Conference at the Peace Palace in The Hague. AIPPI was represented by Mr Teartse Schaper and Mr. Sierd J. Schaafsma, attending especially the sessions related to intellectual property matters (the chairman of Special Committee Q153, Professor van Nispen, had to be in court during the main session on intellectual property).

1. Nineteenth Diplomatic Session, Part One

The Nineteenth Diplomatic Conference of the Hague Conference was originally planned for the autumn of the year 2000, but has been divided into two parts. The present conference was the first part of this Diplomatic Conference. Point of departure was the text of the preliminary draft Convention of 30 October 1999. The conference did not succeed in eliminating all bottlenecks existing in various areas of law. It was decided that the second part of the Diplomatic Conference could not be held before the end of 2002 and that this session should be prepared by a further meeting of a commission, the Commission on General Affairs and Policy, in early 2002. Most probably, a decision will then be taken whether or not to continue the present project. The Hague Conference itself stated in a press release:

Delegates held their discussions on the basis of a Preliminary Draft Convention drawn up in October 1999 and the results of meetings of experts on e-commerce and intellectual property, held in Ottawa and Geneva, as well as of a series of informal meetings held in Washington, Ottawa, Basel and Edinburgh. They identified points of agreement and decided that intense consultations should begin immediately in order to prepare the next meeting of the Commission on General Affairs and Policy. The latter would then thoroughly examine whether conditions are met for a successful conclusion of these negotiations, including sufficient agreement on the way to approach critical areas where consensus is still lacking, a result-oriented method of negotiations, and a schedule for any future negotiations.

2. Intellectual property

The main session on intellectual property took place at 13 June. Key-issue was the scope of the exclusive jurisdiction: should the exclusive jurisdiction ground on industrial property be limited to (all or part of the) validity issues, or should it also apply to infringement?⁽¹⁾

Whereas opinions were strongly divided during the Geneva meeting, the opinion that exclusivity should also cover the infringement won ground in The Hague. The delegations of for example Germany and the United States were converted to this opinion. In the end, however, the conference did not agree on a (final) intellectual property provision. The issue is to be decided later by the second part of the conference. In the new text of the draft convention, the various proposals on intellectual property are therefore put between square brackets. A rule on unregistered trademarks is added. In addition, an Australian-Chinese proposal was made to extend the exclusive infringement jurisdiction to matters of copyright and neighbouring rights.

The AIPPI Melbourne resolution of 30 March 2001 and the International Report of Special Committee Q153 were sent to the delegates beforehand. These AIPPI documents have been promoted to the travaux préparatoires of the convention (in Preliminary Document No. 14). As you know, AIPPI recommended the exclusion of intellectual property matters from the substantive scope of the envisaged convention and the deletion Articles 12, paragraph 4, 5 and 6, calling upon the elaboration of a specific protocol on intellectual property to be added to the envisaged Convention in due time. AIPPI's position came up during the deliberations, but it was felt that intellectual property should not (yet) be excluded from the convention and that agreement is perhaps still possible.

The proposals on intellectual property in article 12 of the draft convention are attached.

Article 12 - Intellectual property ⁽²⁾

(See www.hcch.net)

…

[Alternative A⁽³⁾

4. In proceedings in which the relief sought is a judgment on the grant, registration, validity, abandonment, revocation or infringement⁽⁴⁾ of a patent or a mark, the courts of the Contracting State of grant or registration shall have exclusive jurisdiction.⁽⁵⁾

5. In proceedings in which the relief sought is a judgment on the validity, abandonment, or infringement of an unregistered mark [or design], the courts of the Contracting State in which rights in the mark [or design] arose shall have exclusive jurisdiction.]

[Alternative B⁽⁶⁾

5A. In relation to proceedings which have as their object the infringement of patents, trademarks, designs or other similar rights, the courts of the Contracting State referred to in the preceding paragraph [or in the provisions of Articles [3 to 16]] have jurisdiction^.(7)]

Alternatives A and B

[6. Paragraphs 4 and 5 shall not apply where one of the above matters arises as an incidental question in proceedings before a court not having exclusive jurisdiction under those paragraphs. However, the ruling in that matter shall have no binding effect in subsequent proceedings, even if they are between the same parties. A matter arises as an incidental question if the court is not requested to give a judgment on that matter, even if a ruling on it is necessary in arriving at a decision.]⁽⁸⁾

7. [In this Article, other registered industrial property rights [(but not copyright or neighbouring rights, even when registration or deposit is possible)]⁽⁹⁾ shall be treated in the same way as patents and marks]

[8. For the purpose of this Article, ‘court’ shall include a Patent Office or similar agency.]⁽¹⁰⁾

(1) See the Q 153 International Report of 15 March 2001, Question 8 and 9.

(2) Three proposals have been made with respect to the treatment of intellectual property in the Convention. The first two appear within general brackets and are each bracketed also (Alternatives A and B). That indicates that there is no consensus on the inclusion of intellectual property within the scope of the Convention or in respect of each of the proposals themselves. For the third proposal, see note 10 below.

(3) The main difference between Alternatives A and B is whether proceedings for the infringement of patents and marks and such other rights as may be covered by this provision should fall within the exclusive jurisdiction or not. In addition, for a number of the delegations that favour an exclusive jurisdiction also for infringement under this provision, a satisfactory final or disconnection clause with respect to existing and future instruments regulating jurisdiction, recognition and enforcement for specific areas such as intellectual property is a precondition for including infringement in this Article on exclusive jurisdiction.

(4) It was pointed out that, when deciding which proceedings (e.g. infringement proceedings based on provisions of an Unfair Competition Act or of a Patent or Trademark Act, or proceedings concerning certain common law torts such as passing off) were to be covered by ‘infringement’, the solution should be consistent with the possible exclusion of ‘antitrust or competition claims’ from the scope of the Convention.

(5) This paragraph also covers situations where an application for the grant or registration of a patent or mark has been filed.

(6) This Alternative does not dispute the proposition in Alternative A that there should be exclusive jurisdiction in respect of proceedings that have as their object the registration, validity, nullity or revocation of patents, trade marks, designs or other similar rights. To that extent paragraphs 4 and 5 would remain if paragraph 5A was accepted. Alternative B refers only to proposed paragraph 5A. Paragraphs 6, 7 and 8 are common to both Alternatives.

(7) This provision will have to be excluded from the exceptions stated in Article 17.

(8) The purpose of this paragraph is to maintain non-exclusive jurisdiction where a matter otherwise falling within the scope of paragraphs 4 and 5 arises as an incidental question in proceedings which do not have as their object one or more of the matters described in that paragraph. The intention is that any decision made between the parties on such an incidental question will not have a preclusory effect in another State, in other cases when produced by one of the parties. There is no consensus on this paragraph.

(9) There is no consensus on the words included within the brackets. Other suggestions are to exclude copyright from the scope of the Convention either in whole or only copyright infringement on-line. Furthermore, the following text was proposed as an alternative: [“In proceedings concerning the infringement of a copyright or any neighbouring right, the courts of the Contracting State under whose laws the copyright or the neighbouring right is claimed to be infringed shall have exclusive jurisdiction”]. This proposal seeks to include copyright within the exclusive jurisdiction of the courts of the Contracting State under whose law a copyright is claimed to have been infringed. This is an alternative to the exclusion of proceedings for the infringement of copyright proposed in paragraph 7 above.

(10) This paragraph might be necessary to ensure that decisions of these organs are covered by the chapter on recognition: see the definition of ‘judgment’ in Article 23.