Cecc04En

DRAFT CONVENTION ON EXCLUSIVE CHOICE OF COURT AGREEMENTS ("The Hague")

---> FfiiKonsultEn | Source: Working document 110 revised (May 04)] | The Hague event 04-10-26]

Preparation of submission to COM-consultation

"The Hague Conference on Private International Law is in the final stages of preparation of a Convention on Exclusive Choice of Court Agreements (“Convention”) for business-tobusiness transactions. The draft text produced by the two Special Commissions of the Conference is contained in the Working Document No. 110 Revised. The Convention shall be adopted during a Diplomatic Conference in the beginning of 2005. The European Commission is participating in the negotiations of this Convention on behalf of the European Community."

Relevant articles

Article 2 Exclusions from scope

2. The Convention shall not apply to the following matters - [..] k) {intellectual property rights other than copyright or related rights, except in proceedings pursuant to a contract which licenses or assigns such intellectual property rights{ including proceedings for infringement of the right to which the contract relates}};1 or

Article 6 Stay of proceedings in the chosen court

{ Nothing in this Convention shall prevent the chosen court from suspending or dismissing the proceedings before it, in particular in order to allow the courts of the State under the law of which an intellectual property right arose, to give a judgment on its validity, provided that such dismissal does not prevent the proceedings from being recommenced.}

Article 10 Incidental questions10

1. Where a matter referred to in Article 2, paragraph 2, arose as an incidental question, the ruling on that question shall not be recognised and enforced under this Convention. {2. Where an incidental ruling on the validity of an intellectual property right other than copyright or related rights was necessary for the judgment of the court of origin, recognition or enforcement of the judgment may be refused to the extent that it is inconsistent with a judgment11 on the validity of the intellectual property right rendered in the State under the law of which the intellectual property right arose.12] {3. Where an incidental ruling on the validity of an intellectual property right other than copyright or related rights was necessary for the judgment of the court of origin, recognition or enforcement of the judgment may be postponed or refused at the request of one of the parties if proceedings on validity are pending in the State under the law of which the intellectual property right arose. A refusal does not prevent a subsequent application for recognition or enforcement of the judgment. }

Current draft

http://europa.eu.int/comm/justice_home/ejn/news/news_doc110_en.pdf

Consultation 2004-11-15

7 In addition, certain matters, which otherwise might qualify as “civil and commercial” as well as made in the context of commercial activities, are excluded from the scope, but solely when they should be the subject of the proceedings (Art. 2(2)). The court seized on the basis of the Convention may, however, still consider them - unlike any consumer or employment contract - in the context of an incidental question (Art. 2(3)), i.e. there is no prohibition on applying the Convention (its Chapter II) in proceedings where the decision on the matter which is the subject of the proceedings depends on the assessment of a question falling within the matters excluded from the scope by virtue of Article 2(2). However, any such assessment (ruling) on incidental question is not subject to recognition or enforcement under the Convention (Art. 10 (1)). The exclusions of Article 2(2) are based on a series of policy considerations. One being the exclusion of family and personal status related issues (e.g. lit.(a),(c)), another being the protection of bases of national (and international) exclusive jurisdictions (e.g. lit.(e), (g), (i), (j), (k) (l)) or observance of widely applied other international instruments (e.g. lit. (b),(f), (h)). A particular point of discussions have been intellectual property rights in the context of the Convention. Whether or not intellectual property rights (i.e. industrial property rights, copyright and related rights) should be included in the scope of the Convention has been subject to intensive debate. It has, however, been pointed out that a complete exclusion would limit the utility of the Convention, and a clear majority of negotiating partners has voiced an interest to apply the Convention to proceedings in this field, in particular for claims under licence agreements. Therefore, initially, the draft Convention had foreseen an inclusion of intellectual property rights except for the exclusion contained in Article 1(3) for proceedings that have as their object the validity of industrial property rights to protect the exclusive jurisdiction over the sovereign act of a State to grant such a right (Working Document NO. 49). Discussions on the list of industrial property rights concerned proved to be difficult. Moreover, the EU interests suggest not only the protection of exclusive jurisdiction for the decision on the validity of industrial property rights but in addition also of other subject matter for which exclusive jurisdiction is foreseen in EU legislation such as under the Community trade mark and the Community design regulation or in the case of the future Community Patent Court. The present text of the draft Convention, at the initiative of the EU delegation, therefore further limits the scope of application of the Convention in the case of industrial property rights. In fact, Article 2(2)(k) now provides that industrial property rights are entirely excluded from the scope of the Convention except where claims pursuant to a contract which licences or assigns such a right are concerned. Therefore, not only proceedings on the validity of industrial property rights but any other claims are excluded from the Convention with the exception of claims brought to enforce a licence or similar agreement. Article 2(2)(k) of the draft Convention contains bracketed text at the end of the provision which was added at the request of the US delegation which expressed a strong wish for this addition. Where a licence or similar contract exists, not only the contractual claims but also the claims in tort should be within the scope of the Convention. For the incidental examination of the validity of industrial property rights which remains possible under Article 2(3) of the draft Convention, see explanations to Articles 6 and 10. As far as copyright and related rights are concerned, the approach of the draft Convention remains unchanged. Article 2(2)(k) provides that the Convention shall not apply to intellectual property rights “except copyright and related rights”. These rights are not covered by the exclusion from the Convention but remain entirely within scope. There have, however, been also suggestions to take into account the position of individual authors as the weaker to a contract which might require some appropriate safeguard. Question 3: (a) Are these exclusions for industrial property rights sufficient or on the contrary too broad, taking into account the underlying policy considerations, as well as the application of Articles 6 and 10 on incidental questions and Article 23? (b) Is the inclusion within the scope for copyright and related rights acceptable and should the Convention take into account the position of individual authors as the weaker to a contract?

http://europa.eu.int/comm/justice_home/news/consulting_public/gp_15112004/consultation_paper_en.pdf

Prepare answers

Q3 a)

- IPR no defined legal term, different legal field summed up as IPR are under different foundation. - danger of abusive extension - danger to ecommerce - special provisions needed

"Therefore, initially, the draft Convention had foreseen an inclusion of intellectual property rights except for the exclusion contained in Article 1(3) for proceedings that have as their object the validity of industrial property rights to protect the exclusive jurisdiction over the sovereign act of a State to grant such a right."

- This is basic and has to be affirmed in this precise wording. "the validity of industrial property rights to protect the exclusive jurisdiction over the sovereign act of a State to grant such a right". The wording in the draft is not clear enough. Intellectual property rights is an anglo-saxon term, heavily used in lobbying but with undefined scope and no continental legal meaning. Inclusion of undefined facts and exclusion of defined facts is therefore dangerous from a legalistic point of view. It leads to misleading provisions as we know from Trips where quotes from Trips 27 are used in wrong context to justify legal mechanics of extension. Therefore we recommend to list all precise legal fields of inclusions and exclusion.

"(b) Is the inclusion within the scope for copyright and related rights acceptable and should the Convention take into account the position of individual authors as the weaker to a contract?"

- b) Copyright is seen as an individual author's right in Germany. Therefore compatibility wirth the concept of author's rights has to be checked. The phrase "related rights" is not defined. Esp. It has to be affirmed that exclusive rights such as patents are not "related rights".

Submission

If requested in the contribution, you will be contacted by phone for further explanations.

And I quote: “All answers will be kept confidential in order not to prejudice the negotiation position of the Community”

http://europa.eu.int/comm/justice_home/news/consulting_public/gp_15112004/consultation_paper_en.pdf http://europa.eu.int/comm/justice_home/news/intro/news_intro_en.htm_

Others

Lots of useful information: http://www.cptech.org/ecom/jurisdiction/hague.html

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