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Free access: Why the EU’s top court says no to specialist judges

One of the advocate generals at the Court of Justice of the EU has explained why the Court will not allocate IP cases to a specialist tribunal or to judges trained in IP law

The Luxembourg-based Court of Justice and the General Court are facing a growing docket of cases as a result of the expansion of the European Union and more appeals from new regulatory bodies such as the European Chemicals Agency.

At the moment, the Court of Justice has 27 judges and eight advocates general who hear cases relating to the interpretation of the trade mark regulation and directive. The General Court, which hears actions relating to Community trade marks, has 27 judges.

Some of the Courts' rulings on IP issues have been criticised by practitioners, who say that judges lack the specialism necessary to handle them with adequate consistency.

Last year Alexander von Mühlendahl, vice-president of OHIM between 1994 and 2005, told Managing IP that although he believed the Court of Justice's judgments had clarified many issues relating to trade marks, the picture on infringement issues was less clear.

"The General Court's case law has by now become very difficult to follow, and the results seem to vary from very good to questionable," von Mühlendahl said. "The creation of a specialised IP tribunal is clearly warranted."

But Eleanor Sharpston, the UK's advocate general at the Court of Justice, told Managing IP why the Court is very unlikely to set up a new tribunal to handle IP cases.

In an interview conducted in Luxembourg last month, she said that the Court's system for handling appeals would mean that a new tribunal could increase the Court's workload.

At the moment, for example, cases that are decided by the specialist civil service tribunal in Luxembourg can be appealed to the General Court as of right.

"If you create a specialist IP tribunal based on the same structure as the existing civil service tribunal there would be an appeal on a point of law from that tribunal to the General Court," said Sharpston. "If you create a specialist tribunal for trade mark cases you move the cases to that tribunal and that looks absolutely fine until the appeals start coming in."

Some lawyers have suggested that the Court allocate IP-related cases to those judges who have developed expertise in this area.

But Sharpston said that cultural and historical barriers made that unlikely to happen. Because fascist regimes in Europe often rigged courts, many lawyers from those countries are reluctant to follow the UK practice of handing IP cases to specialist judges.

"The way in which it is determined what judge gets what case should be practically automatic precisely to avoid a repetition of what happened under Hitler," she said. "So there's a very strong legal cultural tide flowing against the idea of having people who are too specialist and get only those cases."

Instead, the Court wants to resolve its workload problem by having more judges - who would handle the full range of the Court's work.

In April, the president of the Court of Justice requested member states appoint an additional 12 judgesto sit in the General Court.

"Whatever it does, the General Court is unable to deal with the volume of cases lodged every year, still less absorb the accumulated backlog," Vassilios Skouris wrote. "Increasing the number of Judges within the General Court … offers greater advantages than establishing a specialised [intellectual property] court."

Read the full interview with Eleanor Sharpston, covering the role of the advocates general, here.

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