Professor de Simone, an Italian national domiciled in Switzerland, invented bacterial compositions used in human nutrition and hygiene. He had been the sole director and shareholder of Mendes, an Italian company, and had worked closely with Florence Pryen, who lived in Italy. Having created a probiotic food product containing a high concentration of beneficial, live bacteria [somewhat unappetisingly described as "live, freeze-dried, pure lactic acid bacteria"], the professor entered into a joint venture agreement with two brothers, who were majority shareholders in the Sigma Tau group of Italian pharmaceutical companies, to exploit that product commercially worldwide.
|Asked if he liked eating probiotic bacteria,|
the answer given by Beavis was more eloquent than any words
In these proceedings Actial contended that, if no interim relief was granted before trial, enabling it to obtain supplies of the product and fulfil orders to UK companies, it would go out of business. The defendants argued that the court lacked jurisdiction to entertain the action under Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
Andrew Hochhauser QC refused Actial's application for interim relief. In his view:
* The defendants were domiciled in Italy or Switzerland. Accordingly, under Article 5(3) of the Regulation, proceedings could only be brought in the UK if that was where the harmful event complained of had occurred or might occur -- and it was for Actial to satisfy the court that it had an arguable case that this was so.
* In claims relating to economic loss such as this one, we have to locate the place where the harmful event directly had its effect on the immediate victim and where the original damage was manifested. In this context, damage occurred where direct harmful consequences were suffered, not at the place where indirect or remote damage occurred or consequential financial loss was felt which had arisen out of the event that had already caused initial and actual damage elsewhere.
* Ideally the court should identify a single place for the occurrence of damage, and one which had the closest proximity to the harmful event.
* Here the original damage caused by the alleged conspiracy and wrongful interference with contractual relations was the non-delivery, on the professor's instructions, of bulk supplies of the product to the Italian and Netherlands packing agents for onward distribution. If the alleged tort had not been committed, the packing agents would have received the product in the usual way. The resultant indirect damage was Actial's inability to supply its UK distributor -- but that was one stage removed. The initial damage did not therefore occur in the UK but when supplies of the product in Italy or the Netherlands ceased. Actial could not therefore bring its claims as currently pleaded within Article 5(3) and the UK court lacked jurisdiction to hear them.The judge did however have some better news for Actial when it came to trade marks. Actial did have a good arguable case that there had been trade mark infringement and passing off in the UK. The court would have jurisdiction to hear such claims under the Community Trade Mark Regulation and was willing to hear an application to amend the claim form and consider an application for interim relief.
Merpel is puzzled by this dispute. Here is a High Court action involving a product that is presumably so commercially valuable that it's worth litigating over, but which features a cast of players drawn entirely from outside the IP community. The Deputy Judge, the barristers and the solicitors on both sides, without prejudice to their undoubted excellence and competence, are all effectively unknown to her. Is this a sign that IP law is fast evolving from a niche specialism to an area of general commercial law, or is there some more interesting reason?
This Kat is a bit puzzled too. While it's encouraging for Actial to learn that it has an arguable case of trade mark infringement and passing off, he wonders what form any interim relief might take, following the amendment of Actial's application for it. He understands that a court may apply American Cyanamid principles and order an infringer to stop infringing -- but can they be stretched far enough to cover what Actial really wants, which is a resumption of the supply of the trade mark-protected product?
More on VSL#3 here