Specialist Intellectual Property Divisions and “forum shopping” – a recent decision by the court of Milan

21 September 2004

Elisabetta Fusar Poli, Rahul Kakkar

Specialist Intellectual Property Divisions (SIPDs) have recently been introduced into twelve Italian courts to deal with matters relating to national and community trade marks, patents, design and copyright as well as any competition matters connected with the protection of intellectual property rights. A recent decision by the SIPD of the court of Milan suggests that these SIPDs may help to contain the so called “forum shopping” phenomenon.

A claimant is entitled to bring proceedings against a defendant before a court where a defendant is domiciled or where the act in question has occurred (for example, where an infringing product has been sold). This is often a tactical decision by the claimant designed to divert the defendant from its “natural judge”. The overhaul of the Italian judicial system has reduced opportunity for such “forum shopping” in relation to intellectual property matters.

Bird & Bird came face-to-face with the procedural problems associated with “forum shopping” in a recent case before the court of Milan. A preliminary injunction petition was filed in the court of Milan against a producer domiciled and carrying out its business within the district of Venice (where a SIPD has been established) on the grounds of trade mark infringement and unfair competition. The petitioner claimed that the court of Milan had jurisdiction over the injunction on account of a single, calculated purchase of an alleged infringing product in Milan by the petitioner. The purchase was made deliberately with a view to bringing proceedings before the Milanese court.

Bird & Bird successfully challenged the jurisdiction of the Milan SIPD relying on case law which establishes that a producer may be sued in the jurisdiction where the infringing products have been sold or marketed by a retailer on certain conditions: i) the retailer is a party to the proceedings; or ii) the producer has co-operated in the sale or marketing of the infringing product in that jurisdiction; or iii) the producer has itself carried out an infringement within that jurisdiction. In this case, the producer had not itself been involved in the infringing acts that had taken place in Milan which eliminated grounds ii) and iii). Furthermore the petitioner did not bring proceedings against the retailer which eliminated ground i). As a result, the judge decided that the court of Milan was not competent to hear the dispute. Accordingly, the petitioner was not able to pursue the producer in the court of Milan.

The introduction of the SIPDs means that a claimant has less choice as to forum in intellectual property matters. In addition, the designation of skilled judges to the SIPDs with specialist experience in intellectual property matters is likely to result in more decisions of this type with the procedural rules being applied strictly. In turn, we may see a decline in “forum shopping” in the field of intellectual property.