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English courts remain a forum for deciding international IP disputes post-Brexit

Peter Brownlow and Mark Hilton of Bird & Bird consider the impact of Brexit on international IP cases heard in England

For more than 200 years, the courts of England and Wales have been hearing international commercial disputes. Historically, this was due to the UK being a nation with considerable international trade, and more recently because English law has often been chosen as the law to govern international commercial contracts.

With respect to IP disputes, English courts have shown a willingness to hear claims based on foreign IP rights. The jurisdictional basis for this remains unaffected by Brexit and the fact the UK is no longer bound by the Brussels Regulation on Jurisdiction and Enforcement may make such claims more likely in the future.

A well-known example of this willingness is the decision of the UK Supreme Court in 2011 in a dispute over ownership of copyright in the design of the Stormtrooper helmets used in the film Star Wars. In that case, the Supreme Court decided that so long as the English court had in personam jurisdiction over the defendant, then the English court had jurisdiction to decide whether there had been infringement of US copyright.

Another example in the field of patent law is the judgment in Actavis, where the English court accepted jurisdiction over a claim for declarations of non-infringement in relation to, not only the UK designation of a European patent, but also the French, German, Spanish and Italian designations.

The procedures for deciding issues of foreign law in the English court have developed over many years and involve experts in the relevant foreign law providing evidence to the court, as to the foreign law, allowing the court to then apply that law to the facts of the case.

There has been some suggestion that Brexit will make it more difficult or impossible to enforce English court IP judgments against defendants who are based outside the UK. However, in practice very little has changed. The position remains the same as it was pre-Brexit for defendants based in jurisdictions outside the EU, such as the US.

For defendants domiciled in an EU member state, the practical effect of Brexit on the enforcement of English court IP judgments is likely to be limited. This is for a number of reasons including that substantial companies are unlikely to want to breach an English court order (even in respect of non-injunctive monetary relief), given that sanctions could be imposed on their activities in the UK or on members of their management visiting the UK.

In addition, if the claim is in relation to a contract which contains an exclusive jurisdiction clause designating the England and Wales courts, EU member state courts are required to enforce any judgment of the English court under the The Hague Convention on Choice of Court Agreements.

Brexit has led people to question whether there will be fewer international IP cases heard in the English courts. There will be a wait for a few years for the answer, although given the approach of the English courts in the past and the advantages of the forum, it would not be surprising if the volume increased post-Brexit.

For a more in-depth look at this see the longer article here.

Peter BrownlowPartner, Bird & BirdE: peter.brownlow@twobirds.comMark HiltonPartner, Bird & BirdE: mark.hilton@twobirds.com

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