Jurisdiction in Intellectual Property Disputes in the Proposal to Reform the International Civil Procedure Law in Japan: An Assessment from Europe

Abstract

The objective of this paper is to analyse the regulation of jurisdiction in intellectual property disputes in the Proposal to Reform the International Civil Procedure Law submitted to the Diet of Japan in March 2010. For this purpose, the regulation in the Proposal is compared with the solutions provided in Europe (Regulation 44/2001) and in four academic proposals recently published. The article is divided into five sections. After an introduction, section II explains the differences that exist in the principles that shape the systems of jurisdiction in Europe and Japan and the consequences that these differences entail for international IPR disputes. In section III, a comparison of regulation of jurisdiction for actions on the registration and validity of IPR is given. Particular attention is paid to the fact that, contrary to the solution in Europe, Japanese case law does not consider that exclusive jurisdiction exists when questions of validity of an IPR are raised as a defence in the proceeding. Section IV focuses on some selected questions concerning jurisdiction in actions on IPR infringement: the existence of a forum rei sitae, the jurisdiction to hear about actions for declaration of non-infringement, and jurisdiction to hear about actions for IPR infringement in multiple states. Section V analyses the problems surrounding jurisdiction in actions of infringement against multiple defendants. After the analysis of all these questions, it can be affirmed that the Proposal does not improve the regulation of jurisdiction in IP matters in Japan. While many of the uncertainties that the Proposal leaves open can be solved by applying the existing case law, others cannot. Because of that it is argued that the Japanese legislator should have gone further. Hopefully, Japanese courts will follow the solutions provided by the ECJ and the existing academic proposals to tackle the remaining uncertainties.