QUESTION: What do the validity in English law of potentially polygamous marriages and the abolition of the "Double Actionability" rule have in common?
ANSWER: They are both the subject of the Private International Law (Miscellaneous Provisions) Act 1995 ("the 95 Act") which was enacted on 8 November 1995.
The aim of this article is to explain the operation of the Double Actionability rule and the far reaching consequences its abolition is likely to have on the ability of the English Courts to grant extra-territorial interlocutory injunctions to restrain infringement of foreign registered trade marks.
The Double Actionability Rule
As most practitioners will be aware, since the late 1980's, the Dutch Courts have been willing to grant extra-territorial preliminary injunctions to restrain infringement of foreign intellectual property rights. (See for instance the Dutch Supreme Court decision in Lincoln v Interlas  NJ No. 404, 1597 or more recently the Dutch Court of Appeal decision in ARS v Organon  GRUR Int. 253). Whilst the English Courts have granted extra-territorial injunctions to restrain breaches of common law rights such as passing off committed outside the jurisdiction, they have to date been unable to restrain infringement of foreign intellectual property rights such as registered trade marks because of the existence of the Double Actionability rule. (Contrast for instance Dunhill v Sunoptic ( FSR 337) with Deff Lepp Music v Stuart Brown ( RPC 273))
At least in a European context, the starting point for any consideration on jurisdiction is the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters ("the Brussels Convention"). The Brussels Convention provides a set of rules for allocating jurisdiction between the courts of the member states of the European Union for civil proceedings such as trade mark infringement proceedings.
It is not the aim of this article to review in detail the impact of the provisions of the Brussels Convention on trade mark infringement proceedings. For present purposes, it is sufficient to note that once the Dutch Courts have jurisdiction over a dispute involving an intellectual property right eg on the basis of the defendant's or co-defendant's domicile (Arts. 2 and 6) or an act of infringement within the jurisdiction (Art. 5(3)) then even if the courts of another member state may have exclusive jurisdiction in respect of the issue of the validity of any foreign intellectual property rights in dispute (Art. 16), they will be willing to grant an extra-territorial preliminary injunction to restrain infringement of foreign intellectual property rights on the basis of Article 24. Article 24 provides that an application for preliminary relief can be made to the courts of any member state even if the courts of another member state have jurisdiction over the main proceedings. Needless to say the interaction between the various provisions of the Brussels Convention, whether the Dutch "kort-geding" procedure (being the procedure used by the Dutch Courts) is appropriate for dealing with such applications and also the circumstances in which such injunctions should be granted have yet to be worked out fully.
However, a prospective plaintiff applying to the English Courts (or for that matter the Scottish or Northern Irish Courts) for an extra-territorial interlocutory injunction to restrain the commission of a tort outside the jurisdiction eg infringement of a foreign registered trade mark has previously been faced with overcoming the additional hurdle of the Double Actionability rule. In effect, this rule provided that the English Courts would not hear an action involving an alleged tortious act committed outside the jurisdiction unless that tortious act was actionable under both English law and also the law of the country where the tortious act took place.
The rationale behind the rule was not entirely clear. However, because of the territorial nature of the UK statutory intellectual property rights (eg use of a trade mark in Germany would not constitute an infringement of the corresponding UK registration), strict application of the rule meant that proceedings for infringement of foreign intellectual property rights (eg infringement of the German registration by the use of the trade mark in Germany) failed the first limb of the rule and accordingly, were not justiciable by the English Courts. (See for instance Def Lepp Music v Stuart Brown  RPC 273 and James Burrough Distillers PLC v. Speymalt Whisky Distributors Ltd  RPC 130).
Although the strict application of the Double Actionability rule to proceedings for infringement of foreign intellectual property rights was considered by some commentators to have been modified by the recent Privy Council decision in Red Sea Insurance v Bouygues SA & Others ( 3 AER 749), this development in the law has now been overtaken by statutory intervention in the form of the Private International Law (Miscellaneous Provisions) Act 1995.
The Private International Law (Miscellaneous Provisions) Act 1995
Part III of the 95 Act (which is expected to be brought into force early in the New Year) has abolished the Double Actionability rule and replaced it with a Choice of Applicable Law rule. Parts I and II relate to interest on judgment debts and arbitral awards and the validity of potentially polygamous marriages in English law respectively.
The Choice of Applicable Law rule provides that the English (or Scottish or Northern Irish) Courts must apply the law of the country in which the alleged tortious act took place save where the connection of the tortious act with another country is such that the law of that other country is more appropriate. The effect of the 95 Act on proceedings for infringement of foreign intellectual property rights is twofold: first, the English Courts will no longer be fettered by the application of the Double Actionability rule; and second, the law of the country where the alleged infringement takes place will invariably be the applicable law for the determination of the issue of infringement.
By way of example, if an English company is alleged to infringe a German registration, the proprietor of that registration may now apply to the English Courts (by virtue of the defendant' domicile in England) for the grant of an extra-territorial interlocutory injunction to restrain infringement in Germany and German law would be the applicable law for the determination of the issue of infringement. Likewise, if a Dutch company is alleged to infringe both a German and an English registration, the proprietor of those registrations may now apply to the English Courts (by virtue of the act of infringement in England) for the grant of an extra-territorial interlocutory injunction to restrain infringement in Germany and England and German and English law would be the applicable laws for the determination of the issues of infringement taking place in Germany and England respectively.
The grant of an interlocutory injunction is of course a discretionary matter and the harmonisation of the national laws on infringement of registered trade marks will clearly have an important impact on the exercise of the Court' discretion. In this regard, the grant of such injunctions would, if anything, seem in the writer' view to be more appropriate in proceedings for infringement of foreign registered trade marks than foreign patents because of the greater degree of harmonisation of the law of infringement of registered trade marks achieved by the Trade Mark Harmonisation Directive.
The final point to note is that if this practice develops in England as well as other European jurisdictions, the potential for forum shopping by brand owners may be greater with national registrations than with a Community Trade Mark Registration. The reason for this is that the jurisdictional provisions of the Community Trade Mark Regulation confine the courts which can grant extra-territorial injunctions to the Community Trade Mark Courts of the member state whose jurisdiction is based on domicile. Brand owners may therefore want to take this into account when deciding whether to file for national registrations or a CTM or whether, having obtained a CTM, to abandon their existing national registrations and claim seniority from them.
First published in the ITMA Information Newsletter in February 1996.