Jurisdiction and Remedies

Private international law and Jurisdiction

Several members of 8 New Square have expertise in the application of private international law to intellectual property disputes including issues as to which court has jurisdiction over the claim. 

With the advent of European harmonisation of the laws relating to jurisdiction and enforcement of judgments, the UK courts have increasingly exercised jurisdiction over foreign intellectual property rights. One of our members was involved in the first such case, Pearce v Ove Arup, where the High Court accepted jurisdiction over a Dutch copyright. Since then several of us have experience of cases involving the correct allocation to the courts of the EU member states of proceedings in respect of unregistered and registered rights: Fort Dodge v Akzo and Coin Controls v Suzo, and as between the courts of England and Wales, Scotland and Northern Ireland: Modus Vivendi v Sanmex and Cintec v Parkes.  Members of chambers acted as Treasury counsel for the UK government in proceedings before the ECJ concerning patents registered in another member state: GAT v LUK and Roche Nederland v Primus.

Contract disputes

We have experience of jurisdictional issues arising in contractual disputes such as the correct choice of law and the appropriate forum for the litigation: Celltech v MedImmune and  Apple Corps v Apple Computer.

Remedies - Injunctions and financial relief

Chambers has always prided itself on its innovative approach to remedies and our historical record bears this out. In 1974 members of Chambers persuaded the House of Lords to order non-party disclosure in Norwich Pharmacal and in 1976, the late Professor Sir Hugh Laddie (a former member of Chambers) “invented” the Anton Piller Order (now known as a search order). These two types of order are now standard tools in intellectual property law and other litigation. More recently, members of Chambers have been responsible for the creation of the post-expiry patent injunction (Dyson v Hoover) and for the rediscovery of the “John Doe” injunction directed to persons unknown (Bloomsbury v News Group).

Due to our extensive litigation experience, we are able to work with instructing solicitors and, where appropriate, forensic experts, as part of a “rapid response” team when urgent injunctions are sought or defended. We have extensive expertise in dealing with final remedies such as permanent injunctions, inquiries as to damages or an account of profits. Our recent cases have included one of the largest ever damages awards for patent infringement (Ultraframe v Eurocell) and one of the largest settlements (Dyson v Hoover).